By Kevin E. Noonan —

Last Wednesday, the U.S. Patent and Trademark Office promulgated "Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues" (76 Fed. Reg. 7162).  The Guidelines, which take effect immediately and apply to all pending applications, "are intended to assist United States Patent and Trademark Office (Office) personnel in the examination of claims in patent applications for compliance with 35 U.S.C. 112, second paragraph" as well as assist Office personnel in examining claims containing "functional language" ("means plus function" claims under 35 U.S.C. 112, 6th para.), "especially computer-implemented invention claims," and for compliance with 35 U.S.C. 112, 4th para. ("Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.")

The Guidelines contain generic reference to "optimizing patent quality" and "fostering innovation and competitiveness" as some of the reasons that the Office must issue patents "with clean and definite claim language" under the statute.   Functionally, this requires Office personnel to give claim terms their "broadest reasonable interpretation" during examination, since the applicant has the opportunity to amend the claims or present arguments why claim terminology is definite (MPEP 2211).  The Guidelines follow the rubrics of claim construction set forth by the Federal Circuit, inter alia, in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), having a hierarchy starting with the plain meaning of the claim terms, express definitions in the specification, and arguments made by the applicant during prosecution.  "Plain meaning" is defined as the "ordinary and customary meaning" of the term. The Guidelines repeat the conventional rationale that claims under examination are not entitled to a presumption of validity, and are not to be construed to be valid.  Examination in the Office uses the broadest reasonable interpretation standard in order to "establish a clear record of what [the] applicant intends to claim."  The standard for deciding that a claim term is indefinite is that the metes and bounds of the claim are clear under the broadest reasonable interpretation of its terms, which is defined as whether a person of ordinary skill could read the term to have more than one reasonable interpretation.  If not, the claims "must be rejected."   However, the Guidelines caution that merely because a claim term is broad it may not be indefinite "provided [that] the scope is clearly defined."  The Guidelines also direct that claims should be examined to determine whether they invoke the "means plus function" format of 35 U.S.C. 112, 6th para.

The Guidelines set forth examples of claim terms that may be indefinite.  These include:

1.  Indeterminate terms, defined as functional claiming (that "recites a feature 'by what it does rather than by what it is'").  The Guidelines do not consider claims using functional language to be per se indefinite, but may be so when the claim "fails to provide a clear-cut indication of the scope of the subject matter" of the claim.  Examples of such indefinite claims include so called "single means" claims, where "all means and methods for resolving the problem [addressed by the claim] may be encompassed by the claim."  The Guidelines acknowledge that whether functional claim language is indefinite will depend on "context," i.e. whether the specification provides proper 35 U.S.C. 112, 1st para. support for the term.   Examples of indefinite functional language include Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) and General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), while instances of functional language that was found to satisfy the definiteness requirement include In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) and In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).   Examination should be performed  as follows:

Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) Whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.

However, "[t]he primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise."

2.  Terms of degree.  The examination standard stated in the Guidelines is whether the specification provides some standard for measuring that degree," citing Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).  If not, the question becomes whether the ordinarily skilled worker would be able to ascertain the scope.  Satisfaction of either of these prongs of the inquiry renders the claim definite.   Declaration evidence (pursuant to 37 C.F.R. 1.132) can also be used to support definiteness by providing examples.

3.  Subjective terms are treated similarly to terms of degree, depending for definiteness on whether the specification provides "some standard for measuring the scope of the term," or whether the skilled worker would be able to ascertain the scope.  However, "[a] claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. . . . Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention."  The Guidelines cite the Datamize case as an example.  Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).

4.  Markush language.  The Guidelines purport to apply the indefinite rubrics to "any claim that recites a list of alternative useable species regardless of format."  The size of the Markush group (i.e., the number of species) is not determinative but can be under conditions where the group is "so expansive that persons skilled in the art cannot determine the mete and bounds of the claimed invention (i.e., cannot envision all of the members of the group).  Also indefinite are "improper" Markush claims, that encompass species that do not share a "single structural similarity" (defined as belonging to the same recognized chemical or physical (or art-recognized) class) or do not share a common use.

Included in this portion of the Guidelines are rules for determining whether a dependent claim complies with 35 U.S.C. 112, 4th para.; rejection is mandated rather than objecting to the claim as a matter of form.

Having reviewed examination, the Guidelines next discuss how compliance with 35 U.S.C. 112, 2nd para. should be integrated into assessing whether the specification complies with 35 U.S.C. 112, 1st para.    The Guidelines do not mandate but do encourage the use of "glossaries" of terms in the specification as being "a helpful device for ensuring adequate definition of terms used in the claims."  Examiners are also instructed to determine whether claims that are definite on their face are indefinite due to inconsistencies between how terms are used in the claims and in the specification, citing In re Cohn, 438 F.2d 989, 993 (CCPA 1971); In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); and In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. Jan. 6, 1997) (unpublished) as examples.

The portion of the Guidelines relating to 35 U.S.C. 112, 6th para. recite conventional rules regarding whether an applicant has invoked this claim format, relating to instances where "means for" and "step for" are used to so invoke the 6th para. structure and instances where the form is applied even though these terms are not used (and the presumptions that attach to each).   The Guidelines set forth numerous examples of "non-structural terms" that invoke the format (including “mechanism for,'' “module for,'' “device for,'' “unit for,'' “component for,'' “element for,'' “member for,'' “apparatus for,'' “machine for,'' or “system for") and ones that have been found to not invoke the format (including “circuit for,''  “detent mechanism,'' “digital detector for,'' “reciprocating member,'' “connector assembly,''  “perforation,''  “sealingly connected joints,''  and “eyeglass hanger member.'').  Indications that the format is intended can also be discerned from the specification, dictionary definitions and the art.  The Guidelines also provide a modification to the 3-pronged analysis set forth in MPEP 2181:

Examiners will apply Sec.  112, 6th para. to a claim limitation that meets the following conditions: (1) The claim limitation uses the phrase “means for'' or “step for'' or a non-structural term that does not have a structural modifier; (2) the phrase “means for'' or “step for'' or the non-structural term recited in the claim is modified by functional language; and (3) the phrase “means for'' or “step for'' or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.

The application of the Guidelines to claims using the 112, 6th para. format requires that "the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function . . .  A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation."

The Guidelines specifically address "computer-implemented means-plus-function limitations," requiring that the corresponding structure is required to be more than simply a general purpose computer or microprocessor," citing Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).  The Guidelines state that disclosing only a general purpose computer as the structure to perform the function "amounts to pure functional claiming.  Instead, the Guidelines require that the computer-implemented function "must" include the algorithm that transforms the general purpose computer into a "special purpose computer."  Generic recitations of "software" that do not provide sufficient details to provide the algorithm are insufficient.  The Guidelines expressly reject the proposition that disclosure of the algorithm is unnecessary if the skilled worker "is capable of writing the software," citing Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-1385 (Fed. Cir. 2009) and Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67 (Fed. Cir. 2008).

Turning to how Examiners should handle indefinite claim language, the Guidelines require that the Examiner "establish a clear record" ("a complete and accurate picture of the Office's consideration of the patentability of an application"), referring to MPEP 2173.05 to provide "numerous examples of rationales that may support" a 112, 2nd para. rejection.   This record includes the Office Action, which should provide the applicant with a "sufficient explanation" of the grounds of rejection for the Applicant to be able to provide "a meaningful response," by then Examiner "pointing out the specific term or phrase that is indefinite" and why the Examiner considers it to be so.  However, while the Examiner properly can provide suggestions on how to amend the claim to overcome the rejection, the Guidelines state that rejection under 35 U.S.C. 112, 2nd para. should not be made "merely . . . to improve the clarity or precision of the language used;" a claim objection is the more appropriate way to achieve this goal.  The Guidelines also require that the Examiner "practice compact prosecution" by "clearly articulat[ing] any rejection early in the prosecution process so that the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity."  If indefiniteness is the only issue, the Guidelines instruct examiners to "open lines of communication with the applicant" by suggesting ways to overcome the rejection through interviews.  If an applicant overcomes an indefiniteness rejection, the Guidelines encourage the Examiner to put on the record the reasons for allowance, including the steps taken that overcame this rejection pursuant to 37 C.F.R. 1.104(e).

Finally, the Guidelines contain a brief synopsis of patentability requirements for computer-implemented inventions than encompasses all the statutory requirements.

Public comments are solicited, to be received on or before April 11, 2011; comments should be submitted by e-mail to SEGuidelines112@uspto.gov.   Promulgation of these Guidelines does not constitute substantive rulemaking by the Office, and thus do not require a public hearing under the Administrative Procedures Act (there will be no public hearing).  In addition, the Notice asserts that public notice and comment are not required, and that the Office merely solicits comments for their own benefit.  Also, failure of the Office to comply with these Guidelines is neither appealable nor petitionable.

By Donald Zuhn —

Last week, the U.S. Patent and Trademark Office provided additional details regarding its proposed "Three Track" patent examination initiative.  An outline of the Office's Three Track program, or Enhanced Examination Timing Control Initiative, was originally provided in a Federal Register notice (75 Fed. Reg. 31763) published last June (see "USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative").  In that notice, the Office indicated that under the Three Track proposal, applicants would be able to:  (1) request "prioritized examination" (Track I examination), (2) request a delay of up to 30 months in the docketing of a non-continuing application (Track III examination), or (3) make neither of these requests and receive the current application processing (Track II examination).  That notice also indicated that the fee for Track I examination "would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of nonprioritized applications would not increase due to work being done on the prioritized application."

In last week's announcement regarding the Three Track program, the Office noted that the proposed fee for Track I examination, which would provide prioritized examination of an application within 12 months of its filing date, would be $4,000.  In addition, the Office noted that Track I applications would be limited to four independent and thirty total claims and would have to be filed electronically via the EFS-Web.  During the first year of the program, the Office intends to limit the number of participating applications to 10,000 in order to ensure that it can meet the 12-month examination goal.  The Office would also like to offer a 50% discount on the Track I fee to small entities, and noted that the patent reform legislation (S. 23) recently introduced in the Senate (see "Here We Go Again") would allow the Office to set its own fees and thereby extend this discount to small entity applicants.

Additional details regarding the Office's Track I-related proposals were published on Friday in a notice in the Federal Register (76 Fed. Reg. 6369).  In this notice, the Office stated that in response to input it received at a public meeting on July 20, 2010 and via more than fifty written comments, the Office was "in the process of refining the 3-Track proposal."  However, because "the vast majority of public input was supportive of the Track I portion of the 3-Track proposal," the Office would "proceed with immediate implementation of the Prioritized Examination Track (Track I), providing fast examination for applicants desiring it, upon payment of the applicable fee and compliance with [other] additional requirements."  The notice explains that:

Under Track I prioritized examination, an application would be accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application.  The aggregate goal for handling applications under Track I prioritized examination would be to provide a final disposition within twelve months of prioritized status being granted.  The final disposition for the twelve-month goal means: (1) Mailing of a notice of allowance, (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination, or (6) abandonment of the application, within twelve months from the date prioritized status has been granted.

To participate in the Track I program, applicants would have to fulfill the following requirements:

• File an original utility or plant nonprovisional application under 35 U.S.C. § 111(a);
• File the application via the Office's electronic filing system (EFS-Web);
• File an application that is complete under 37 C.F.R. § 1.51(b), with the filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee paid at the time of filing;
• Request prioritized examination (preferably by using Form PTO/SB/424);
• Pay the required fees for requesting prioritized examination at the time of filing (i.e., the prioritized examination fee set forth in 37 C.F.R. § 1.17(c), the processing fee set forth in 37 C.F.R. § 1.17(i), and the publication fee set forth in 37 C.F.R. § 1.18(d)); and
• If necessary, amend the application to contain no more than four independent claims and thirty total claims.

In addition, the notice states that "[w]here . . . an applicant files a petition for an extension of time to extend the time period for filing a reply, the prioritized examination of the application will be terminated."  Thus, the notice advises that applicants participating in the program should consider:

(1) Acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete schedule of claims from the broadest to which the applicant believes he is entitled in view of the state of the prior art to the narrowest to which the applicant is willing to accept; (2) submitting an application in condition for examination; (3) filing replies that are completely responsive to the prior Office action and within the shortened statutory period for reply set in the Office action; and (4) being prepared to conduct interviews with the examiner.

The notice also indicates that "the prioritized examination of the application will be terminated if a request for continued examination is filed."

While the notice proposes amending 37 C.F.R. § 1.17(c) to set the fee for filing a request for prioritized examination under § 1.102(e) at $4,000.00, the notice also indicates that:

If legislation is passed providing a fifty percent fee reduction for providing prioritized examination under 37 CFR 1.102(e) for small entities under 35 U.S.C. 41(h)(1) and that the prioritized examination fees be set to recover the estimated cost of the prioritized examination program, the Office would set the prioritized examination fee at $4,800 ($2,400 for small entities), since 27.8 percent of the new serialized utility and plant applications filed in fiscal year 2010 were by small entities.

The notice sets a March 7, 2011 deadline for the submission of comments regarding the Office's Track I-related proposals, which should be should be sent by e-mail to track_I_comments@uspto.gov, or by regular mail addressed to: Mail Stop Comments — Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, to the attention of Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy.