On February 9, 2011, the U.S. Patent & Trademark Office (USPTO) issued Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications (the “Guidelines”). The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. Part 1 of the Guidelines pertains to the provisions of 35 U.S.C. § 112, 2 regarding claim definiteness, while Part 2 of the Guidelines pertains to the examination of so-called “computer-implemented functional claim limitations.”
In Part 1 of the Guidelines, a 3-step process is described for the examination of patent claims under 35 U.S.C. § 112, 2. Step 1 begins with an interpretation of the claims. The Guidelines emphasize that examiners must assign a “broadest reasonable interpretation” to claim terms that is consistent with the patent specification and reasonable from the perspective of “one of ordinary skill in the art.” Step 2 focuses on determining whether the claims as interpreted are “definite” and “clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” Examples of indefinite claiming include: 1) “functional claiming” that recites a feature “by what is does rather than what it is,” 2) “terms of degree” which fail to include “some standard for measuring that degree,” 3) “subjective terms” for which the scope “must depend solely on the unrestrained, subjective opinion of a particular individual” and 4) “improper Markush groups” which define a number of different “species” of the claim term that fail to share either a “single structural similarity” or a “common use.” Step 2 also provides guidelines for interpreting so-called “means for” and “step for” limitations under 35 U.S.C. § 112, 6.
Step 3 concludes the examination process with guidelines for resolving any indefinite claim language identified in step 2. The Guidelines make clear that it is the examiner’s duty to provide a “sufficient explanation” of the indefinite language as part of a “clear record,” and to practice the principles of “compact [patent] prosecution” so that “the applicant has the chance to provide evidence of patentability and otherwise reply completely at the earliest opportunity.” Notably, examiners are encouraged to attempt to resolve indefiniteness issues with the patent applicant early on by interview before formally rejecting the patent application on indefiniteness and other grounds.
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