Monday, September 15, 2008

USPTO Issues Dual Memos on 112 Rejections

Earlier in the year, the CAFC issued its opinion in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008), where the court stated "[w]e note that the patent drafter is in tlle best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation."

Taking this language to heart, the PTO issued dual memorandums "to remind the examining corps of the appropriate use of indefiniteness rejections-under 35 U.S.C. 112, second paragraph."

To wit:

The essential inquiry pertaining to this requirement is whether the claims set out and describe a particular subject matter with a reasonable degree of clarity and particularity. Definiteness of claim language must be analyzed, not in a vacuum, but in light of the content of the particular application disclosure, the teachings of the prior art, and the claim interpretation that would be given by one having ordinary skill in the pertinent art at the time the invention was made . . . providing a definition of a claim term in the written description does not preclude a finding of indefiniteness of the claim term. The clarity of the provided definition of a term in a claim must also be evaluated from the perspective of one of ordinary skill in the art. If an examiner, when evaluating a claim term's disclosed definition, concludes the definition is not clear and precise and one of ordinary skill in the art would consider the term indefinite (e.g., the definition's broadest reasonable interpretation results in more than one meaning and/or interpretation), then a rejection under 35 U.S.C. 112, second paragraph, would be appropriate.
Also, with regard to 112, as it applies to means-plus-function claims:
A rejection under 35 U.S.C.112, second paragraph, is appropriate if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. A bare statement that known techniques or methods can be used would not be a sufficient disclosure.

[F]or a computer-implemented means-plus-function claim limitation that invokes 35 U.S.C. 112, sixth paragraph, the corresponding structure is required to be more than simply a general purpose computer or microprocessor. The corresponding structure for a computer-implemented function must include the algorithm as well as the general purpose computer or microprocessor. The written description of the specification must at least disclose the algorithm that transforms the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm that performs the claimed function. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. See MPEP 2181 for examples where the courts held that the corresponding structure is adequate for the computer-implemented means plus-function claim limitations. A rejection under 35 U.S.C. 112, second paragraph, is appropriate if the written description of the specification discloses no corresponding algorithm.
Read/download "Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph" (link)

Read/download "Indefiniteness rejections under 35 U.S.C. 112, second paragraph" (link)

Seja o primeiro a comentar

Powered By Blogger

DISCLAIMER

This Blog/Web Site ("Blog") is for educational purposes only and is not legal advice. Use of the Blog does not create any attorney-client relationship between you and Peter Zura or his firm. Persons requiring legal advice should contact a licensed attorney in your state. Any comment posted on the Blog can be read by any Blog visitor; do not post confidential or sensitive information. Any links from another site to the Blog are beyond the control of Peter Zura and does not convey his, or his past or present employer(s) approval, support, endorsement or any relationship to any site or organization.

The 271 Patent Blog © 2008. Template by Dicas Blogger.

TOPO