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35 U.S.C. 112, 6th Paragraph

Long V. LeSPE, AU 1641

(703) 305-3399

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35 USC 112, 6th

Paragraph

Topics

35 U.S.C. 112, 6th Paragraph The Donaldson Decision

Scope of application: method claims

The Guidelines: Claim limitations invoking 35

U.S.C 112, 6th Paragraph involve 3-Prong Analysis Examination Process: Initially, 1) must use means

for or step for, 2) must include function, and 3)must not be modified by sufficient structure

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35 USC 112, 6th

Paragraph

Topics (continued):

Factors to be considered in decidingEquivalence:

Indicia of Equivalence

Supplemental Guidelines: 65 FR38510 (June 21, 2000)

1236 OG (July 25, 2000)

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35 USC 112, 6th

Paragraph

An element in a claim for a combination

may be expressed as a means or step forperforming a specified function without therecital of structure, material, or acts insupport thereof, and such claim shall be

construed to cover the correspondingstructure, material, or acts described in thespecification and equivalents thereof.

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35 USC 112, 6th

Paragraph

An element in a claim for a combinationmay be expressed as a... means or step for

performing a specified function

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35 USC 112, 6

th

Paragraph

without the recital of structure, material,

or acts in support thereof, and such claim shall be construed to cover the

corresponding structure, material, or acts

described in the specification and equivalents thereof.

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TheD

onaldson decision:

In re Donaldson Co., 29 USPQ2d 1845 (Fed.

Cir. 1994) means-or-step-plus-function limitation

should be interpreted by the PTO with regard

to the structure disclosed in the specificationcorresponding to such language

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TheD

onaldson decision:

Examiners must interpret a 35 U.S.C. 112

sixth paragraph limitation in a claim aslimited to the corresponding structure

material or acts described in the specification

and equivalents thereof

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SCOPE OF

APPLICATION

It also applies to method claims:

An element in a claim for a combination may beexpressed as a means or step for performing the

specified function without the recital of structure,material, or acts in support thereof

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SCOPE OF

APPLICATION

Paragraph 6 of U.S.C. 112 applied to functional method

claims where the element at issue sets forth a step for

reaching a particular result, but not the specific technique orprocedure used to achieve the result.

The sixth paragraph is implicated with regard to steps only

when the steps plus function without acts are present.

Method or process claims may therefore be written as a stepfor performing a specified function without the recital of

acts in support of the function. O.I. Corp. V. Tekmar Co.,

115 F.3d 1576, 42 USPQ2d 1777, 1781 (Fed. Cir. 1997)

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35 U.S.C 112, 6th Paragraph

Guidelines

Claim limitations will invoke 35 U.S.C. 112,

paragraph 6 if the limitations satisfy the 3-prong

analysis:

Must use the phrase means for or step for

The means for or step for must be modified by

functional language

The means for or step for must not be modified by

sufficient structure, material, or acts for achieving the

specified function

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Guidelines

The first Prong:

Must use the phrase means for or step for The words means and for need not be

immediately adjacent each other, e.g.

meansfor

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Guidelines Initially, a claim element not using means for or

step for will not be considered to invoke 35

U.S.C. 112, 6th Paragraph If applicant wishes to have the claim limitation

treated under paragraph 6, applicant must either:

amend the claim to include the phrase means for or

step for; or show that the claim limitation is written as a function to

be performed and does not provide sufficient structure,material, or acts

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Guidelines The term means gives rise to a presumption that

the inventor used the term advisedly to involve the

statutory mandates for means-plus-functionclauses. York Products, Inc. v. Central Tractor Farm & FamilyCenter, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1623 (Fed. Cir. 1996)

The presumption is not conclusive. As the Courtstates:

Merely because a named element of a patent claim isfollowed by the word means, however, does notautomatically make that element a means-plus-functionelement under 35 U.S.C. 112, Paragraph 6. Cole v.Kimberly-Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006(fed. Cir. 1996)

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Guidelines

The Second Prong:

The means for or step for must bemodified by functional language Claiming a step or series of steps by themselves does not

implicate 35 U.S.C. 112, paragraph 6. Merely claiming a

step without recital of a function is not analogous to ameans-plus-function. O.I. Corp. V. Tekmar Co., 115

F.3d 1576, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997)

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GuidelinesThe Third Prong:

The means for or step for must not be

modified by sufficient structure, material, oracts for achieving the specified function Where a claim element recites a function, but then goes

on to elaborate sufficient structure, material, or acts to

perform entirely the recited function, the claim is not inmeans-plus-function format (Cole v. Kimberly-ClarkCorp., 102 F.3d 524, 531, 41 USPQ2d 101, 1006 (Fed.Cir. 1996),Laitram Corp. v. Rexnord, Inc., 939 F.2d1533, 1536, 19 USPQ 1367, 1369 (Fed. Cir. 1991)

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Examination Process

The examination process under 35 U.S.C.

112, 6th

paragraph: begin by applying the 3-prong analysis

If the phrase means for or step for is absent,

paragraph 6 is not invoked

If the phrase means for or step for is used

but either the second or third prong of the test is

not satisfied, paragraph 6 is not invoked

LLe:LLe:LLe:

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Examination Process

If the phrase means for or step for isabsent from the claim limitation, the

examiner will treat the claim as NOT

invoking 35 U.S.C. 112, 6th Paragraph

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Examination Process

Where the phrase means for or step for is

present but the claim limitation does not satisfy the

second or third prong of the 3-prong test, the

examiner will likewise treat the claim as NOT

invoking 35 U.S.C 112, 6th Paragraph

If the applicant responds by questioning whether

the examiner has properly treated the claim, the

examiner then provide an explanation

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35 U.S.C. 112, 6

th

Paragraph

Factors to be considered in deciding

equivalence

The element must perform the identical function

Secondary indicia of equivalence

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35 U.S.C. 112, 6

th

Paragraph

Indicia of Equivalence

Function Way Result:Same function in substantially same way and produces

substantially same result

Interchangeability

Structural Equivalent

Insubstantial Differences

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35 U.S.C. 112, 6

th

Paragraph

If the examiner determines that the prior art element

is equivalent to the structure, material, or acts

described in the applicants specification, examiner

can conclude that the prior art anticipates the

means-(or step) plus-function limitation

Examiner should also make 35 U.S.C. 103 rejectionwhere appropriate

Burden of going forward shifts to applicant

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INTENDED USE

In apparatus, article, and composition claims:

Intended use must result in a structuraldifference between the claimed invention and the

prior art

If the prior art structure is capable of performing

the intended use, then it meets the claim.

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INTENDED USE

In a process of making:

The intended use must result in a manipulativedifference as compared to the prior art

35_usc_112

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