[99] A.Hirshfeld, Alexandria, PTO, 22.07.2014

[99] A.Hirshfeld, Alexandria, PTO, 22.07.2014

Software Partnership Meeting: Functional Claiming and Clarity of the Record July 22, 2014 in Alexandria, VA Agenda Time 1:05 PM 1:20 PM Topic Opening Remarks, Deputy Director Michelle Lee 2:40 PM Presentation on Clarity, Judge Paul R. Michel

Functional Claiming Training, Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy; Greg Vidovich, TC Director 3600; and Derris Banks, TC Director 2600 BREAK 3:00 PM Stakeholder Presentations 3:50 PM Open Discussion, Wendy Garber, TC Director 2100, and Dave Wiley, TC Director 2600 4:30 PM

Alice Corp. Preliminary Examination Instructions, Drew Hirshfeld 4:55 PM Closing 1:35 PM Materials Available at: http://www.uspto.gov/patents/init_events/ software_partnership.jsp 3 Training on Functional

Claiming Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy Derris Banks, Director, Technology Center 2600 Greg Vidovich, Director, Technology Center 3600 Importance of Claim Clarity Key component to enhancing the quality of patents and raising confidence in the patent system The Offices efforts include focus on: o Ensuring that the boundaries of the claim are easily understood; and o Providing a clear record of prosecution 5

Supplemental 112 Examination Guidelines Comprehensive Guidelines were issued in January 2011: o Examination of claims for compliance with 112, 2nd paragraph (now 112(b)) o Examination of claims that contain functional language under 112, 6th paragraph (now 112(f)) 6 Targeted Training on Functional Claiming USPTO has developed an extensive, multi-phased training program for all examiners focused on evaluating functional

claims and improving examination consistency and the clarity of the examination record 7 Recently Completed Examiner Training Four, 1-hour examiner training modules: o Module 1: Identifying 112(f) limitations Recognizing 112(f) limitations that do not use classic means for phrasing Interpreting generic placeholders that serve as substitutes for means (e.g., unit, mechanism) o Module 2: Clarifying the record to place remarks

in the file regarding when 112(f) is, or is not, invoked Establishing presumptions based on use of means Providing explanatory remarks when presumptions are rebutted 8 Recently Completed Examiner Training Module 3: Interpretation and definiteness of 35 U.S.C. 112(f) limitations o How to interpret 112(f) limitations under the broadest reasonable interpretation (BRI) standard o Evaluating equivalents o Determining whether a 112(f) limitation is definite under 112(b)

Module 4: Computer-implemented (software) 112(f) limitations o Determining whether a sufficient algorithm is provided to support a software function 9 Module 1: Identifying Limitations that Invoke 112(f) Overview of 112(f) for means-type claims o Intended to reinforce the 2011 112 Supplemental Guidelines and training, especially with respect to boundaries for functional claim language o Motivated by public concerns over claim clarity o Critical for examination under the Broadest Reasonable Interpretation (BRI) standard

10 Module 1: Identifying Limitations that Invoke 112(f) 3-prong analysis for means-type claim limitation as set forth in MPEP 2181(I): A. The claim limitation uses the phrase means or a term used as a substitute for means that is a generic placeholder; B. The phrase means or the substitute term is modified by functional language, typically linked

by the transition word for (e.g., means for) or another linking word; and C. The phrase means or the substitute term is not modified by sufficient structure or material for performing the claimed function 11 Module 1: Identifying Limitations that Invoke 112(f) 112(f) presumptions: o The term means with functional language raises a rebuttable presumption that the claim element is to be treated under 112(f)

Rebutted when the function is recited with sufficient structure or material within the claim itself to entirely perform the recited function o Absence of the term means with functional language raises a rebuttable presumption that the claim element is not to be treated under 112(f) Rebutted when claim element (1) recites a generic placeholder for structure or material; (2) recites a function; and (3) does not recite sufficient structure or material to perform the function 12 Module 2: Making the Record Clear Benefits of a clear prosecution record o Clarifies the record with regard to the broadest reasonable interpretation for the claim limitations

o Places the Applicant on notice with regard to the Offices position, thus enabling a more effective Applicant response o Assists in the evaluation of any afforded patent protection throughout the life of the patent 13 Module 2: Making the Record Clear When an application contains claim limitations in the form of a term modified by functional language, note the 112(f) presumptions by use of FP 7.30.04 FP 7.30.04 recites in part: Claim elements that use the word means are presumed to invoke 112(f) except as otherwise indicated in the Office Action.

Similarly, claim elements that do not use the word means are presumed not to invoke 112(f) except as otherwise indicated in an Office Action. 14 Module 2: Making the Record Clear In addition to the use of FP 7.30.04, the prosecution record should be clarified when the presumptions are overcome, such as when: o a claim uses the word means and 112(f) is not invoked Not modified by functional language Includes sufficient structure or material for achieving the specified function

o a claim uses a generic placeholder instead of the word means and 112(f) is invoked 15 Module 2: Making the Record Clear After completing the 3-prong analysis for all recitations of a term modified by functional language, make your determinations clear in the record: o Use FP 7.30.04, once during prosecution, whenever a term modified by functional language is present in the claims to note 112(f) presumptions in the record o Specifically identify claim language that uses the word means and 112(f) is not invoked with explanation Not modified by functional language

Includes sufficient structure to perform the associated function o Specifically identify claim language that uses a generic placeholder for the word means and 112(f) is invoked 16 Module 3: BRI and Definiteness of 112(f) Limitations Ensuring that a claim limitation that invokes 35 U.S.C. 112(f) is properly interpreted o Statutorily authorized claiming technique (means-(or step-)plus-function limitations) Invoking 112(f) permits an applicant to claim an

element using purely functional language, but the interpretation is limited to the description in the specification and equivalents Ensuring that a 112(f) limitation is definite and making a 112(b) rejection when appropriate 17 Module 3: BRI and Definiteness of 112(f) Limitations Typically, under the BRI, the claim language is construed in accordance with its plain meaning in light of the specification as it would be understood by one of ordinary skill in the art o The specification is used to interpret the meaning of the claim terms - not to implicitly add limitations that do not

have express basis in the claim o A claim would not be limited to the preferred embodiment unless those limitations are positively recited in the claim 18 Module 3: BRI and Definiteness of 112(f) Limitations 35 U.S.C. 112(f) imposes limits on the BRI o BRI under 112(f) is restricted to the corresponding structure, material, or acts described in the specification and equivalents thereof 112(f) is a claiming technique that allows applicants to

use purely functional terms in their claims in exchange for relying on the structure, material or act that performs the function described in the supporting specification 19 Module 3: BRI and Definiteness of 112(f) Limitations What qualifies as corresponding structure or material? o The structure or material that is described in the specification as performing the recited function The statute identifies the specification this is interpreted to mean the written description, including the drawings. This is also called the corresponding disclosure, meaning the description in the specification

o Adequate disclosure in the specification is required for the claim to be definite under 112(b) because the specification forms part of the 112(f) claim limitation 20 Module 3: BRI and Definiteness of 112(f) Limitations Result of an inadequate corresponding disclosure for 112(f) limitation: o The claim limitation becomes an unbounded purely functional limitation No limits imposed by structure, material or acts Covers all ways of performing a function, both known and unknown

Indefinite under 35 U.S.C. 112(b) (second paragraph, pre-AIA) because claim boundaries are unknown 21 Module 3: BRI and Definiteness of 112(f) Limitations A claim including a means-plus-function element must be rejected as indefinite under 112(b) when: A. 112(f) has been invoked, and there is no disclosure of corresponding structure that performs the claimed function; B. 112(f) has been invoked, and the corresponding structure is insufficient to perform the claimed function;

22 Module 3: BRI and Definiteness of 112(f) Limitations A claim including a means-plus-function element must be rejected as indefinite under 112(b) when: C. 112(f) has been invoked, and there is no clear linkage disclosed between the corresponding structure and the claimed function; or D. It is unclear whether 112(f) is being invoked. 23 Module 3: BRI and Definiteness of

112(f) Limitations Provide reasons to support an indefiniteness rejection o Make the written record clear as to the specific deficiencies, based on reasons A, B, C, or D (prior slides) o Will provide the applicant an opportunity to directly address the issues Provide an explanation on the record regarding claim construction when needed to assist in clarifying position

o Identify on the record the corresponding structure for a 112(f) limitation 24 Module 3: BRI and Definiteness of 112(f) Limitations A showing by applicant that one of ordinary skill in the art could find a way to perform the function of a 112(f) limitation does not satisfy the 112(b) requirement for disclosure of corresponding structure o The purpose of 112(f) is to ensure that the supporting disclosure imposes boundaries on the purely functional language used in a means-plus-function claim limitation o An appropriate response to a rejection under 112(b) would be to:

Identify the structure described in the specification that performs the claimed function, or Amend the claim to recite the structure that performs the function if possible, thus not invoking 112(f) 25 Module 3: BRI and Definiteness of 112(f) Limitations Equivalents - An equivalent must perform the identical function specified in the claim Applicant is not required to explain the full range of

equivalents o However, if applicant chooses to specify equivalents, the BRI will be limited to those specified Equivalence is determined based on what one of ordinary skill in the art would consider a functional equivalent to the structure(s) described in the specification as performing the claimed function 26 Module 3: BRI and Definiteness of 112(f) Limitations

If equivalents are not defined, the range of functional equivalents in the prior art can be identified using any one of these factors: o The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification; o A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification; or

o There are insubstantial differences between the prior art element and the corresponding element disclosed in the specification 27 Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness Goal: Ensuring that software-implemented 112(f) functional claim limitations (means-plusfunction) have definite boundaries under 112(b) Topics: o Review of invocation of 112(f) and evaluating definiteness of a 112(f) limitation

o Handling common types of software-related claims, including programmed computer functions o Clarifying the record, including identifying whether 112(f) computer-related limitations have clear boundaries 28 Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness

Programmed computer functions require a computer programmed with an algorithm to perform the function o An algorithm is a step-by-step procedure for accomplishing a given result o Can be expressed in various ways in any understandable terms including as a mathematical formula, in prose or as a flow chart, or in any other manner that provides sufficient structure (Finisar) o Amount of disclosure of an algorithm is analyzed on a case-by-case basis 29

Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness Two types of computer-implemented functions: o Specialized functions: functions other than those commonly known in the art, often described by courts as requiring special programming for a general purpose computer or computer component to perform the function Ex. means for matching incoming orders with inventory on a pro rata basis

o Non-specialized functions: functions known by those of ordinary skill in the art as being commonly performed by a general purpose computer or computer component Ex. means for storing data 30 Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness The corresponding structure in the specification

that supports a 112(f) limitation that recites a specialized function is: o A general purpose computer or computer component along with the algorithm that the computer uses to perform the claimed specialized function The disclosure requirement under 112(f) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed function 31 Module 4: Evaluating 112(f) Limitations in

Software-Related Claims for Definiteness A specialized function must be supported in the specification by the computer or computer component and the algorithm that the computer uses to perform the claimed specialized function o The default rule for 112(f) programmed computer claim limitations is to require disclosure of an algorithm when special programming is needed to perform the claimed function o Disclosure of the step by step procedure for specialized functions establishes clear, definite boundaries and notifies the public of the claim scope o Claiming a processor to perform a specialized function without disclosing the internal structure of the processor in the form of an algorithm, results in claims that exhibit the overbreadth inherent in open-ended functional claims (Halliburton Energy Services (emphasis added))

32 Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness A non-specialized computer function can be adequately supported in the specification by a general purpose computer or a known computer component only o Applies to functions that can be accomplished by any general purpose computer without special programming o It is only in rare circumstances that an algorithm need not be disclosed o In those situations, make the record clear, if necessary, that the function is a non-specialized function and therefore no disclosure of an algorithm is required o Note that a known prior art device (any general purpose

computer) that performs the claimed function would anticipate the limitation 33 Module 4: Evaluating 112(f) Limitations in Software-Related Claims for Definiteness The corresponding structure in the specification that supports a 112(f) limitation that recites a non-specialized function is: o A general purpose computer or a known computer component that is recognized by those of ordinary skill in the art as typically including structure and basic

programming, if needed, to perform the claimed function o No disclosure of a specific algorithm is required Sufficient supporting structure for a means for storing data could be a known memory device, such as a RAM, recognized by those skilled in the art as sufficient structure for storing data 34 Examiner Guidance and Training Materials: How to Access

35 Examination Guidance and Training Materials: How to Access 36 Next Steps Next series of training modules focused on: o Claim interpretation: plain and ordinary meaning; o Definite boundaries under 112(b) for functional claim limitations that do not invoke 112(f); and o Written description and enablement 37

USPTO Executive Actions Webpage 38 Additional Information USPTO-led Executive Actions on High Tech Patent Issues o http://www.uspto.gov/executiveactions Software Partnership o http://www.uspto.gov/patents/init_events/ software_partnership.jsp Examiner Guidance and Training http://www.uspto.gov/patents/law/exam/examguide.jsp USPTO.gov main page radio button

Feedback: [email protected] 39 Alice Corp. v. CLS Bank USPTO Preliminary Examination Instructions 2014 Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy Preliminary Examination Instructions for Analyzing Claims with Abstract Ideas Supreme Court issued unanimous decision on June 19, 2014 USPTO issued Preliminary Examination Instructions on June 25, 2014

Further guidance will be developed based on: o The decision considered in the context of existing precedent o Public feedback 41 Preliminary Examination Instructions for Analyzing Claims with Abstract Ideas In Alice Corp., the Supreme Court applied the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2012) (Mayo) This framework is applicable to all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. 101

Alice Corp. does not: create a per se excluded category of subject matter, such as software or business methods, or impose any special requirements for eligibility of software or business methods 3 Preliminary Examination Instructions Changes from Prior Guidance Changes from prior guidance: Under Alice Corp., the same analysis is used for: o all types of judicial exceptions

Prior USPTO guidance applied a different analysis to claims with abstract ideas than to claims with laws of nature o all categories of claims Prior USPTO guidance applied a different analysis to product claims involving abstract ideas than to process claims 43 Analyzing Claims with Abstract Ideas: Basic Inquiries The basic inquiries to determine subject matter eligibility remain the same:

Does the claim fall within one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter? o If not, the claim must be rejected as being directed to nonstatutory subject matter Is the claim directed to an ineligible abstract idea? o Examiners are provided a two part analysis following the framework set forth in Mayo and relied upon in Alice Corp. This analysis determines whether the claim is directed to a patenteligible application of an abstract idea or to the (ineligible) abstract idea itself 44 Preliminary Examination Instructions for Analyzing Claims with Abstract Ideas Two-part Analysis for Abstract Ideas

Part 1: Determine whether the claim is directed to an abstract idea Part 2: If so, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself o The claim is analyzed as a whole by considering all claim elements, both individually and in combination 45 Preliminary Examination Instructions Part 1 Part 1: Abstract Ideas At some level, all inventions embody, use, reflect, rest upon, or apply abstract ideas and the other

exceptions However, an invention is not rendered ineligible simply because it involves an abstract concept inventions that apply the abstract idea in a meaningful way are eligible 46 Preliminary Examination Instructions Part 1 Part 1: Abstract Ideas Examples of abstract ideas referenced in Alice Corp. include: o o o o

Fundamental economic practices; Certain methods of organizing human activities; [A]n idea of itself; and, Mathematical relationships/formulas For claims that include abstract ideas, the examiner proceeds to Part 2 to determine whether the abstract idea has been applied in an eligible manner 47 Preliminary Examination Instructions Part 2 Part 2: Significantly More? For Part 2, examiners determine whether any

element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself o In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? 48 Preliminary Examination Instructions Part 2 Part 2: Significantly More? Limitations referenced in Alice Corp. that may be enough to qualify as significantly more when

recited in a claim with an abstract idea: o Improvements to another technology or technical field o Improvements to the functioning of the computer itself o Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment 49 Preliminary Examination Instructions Part 2 Part 2: Significantly More? Limitations referenced in Alice Corp. that are not enough to qualify as significantly more when recited in a claim with an abstract idea: o Adding the words apply it (or an equivalent) with an abstract

idea o Mere instructions to implement an abstract idea on a computer o Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry 50 Preliminary Examination Instructions Part 2 If the claim does not qualify as significantly more than an abstract idea, the claim will be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter After the 101 analysis is complete, examination then proceeds in accordance with the other

requirements of 35 U.S.C. 101 (utility and double patenting), non-statutory double patenting, and 112, 102, and 103 51 Preliminary Examination Instructions Further Guidance The public is invited to contribute written comments o Written comments received by July 31, 2014, will be taken into consideration when formulating further guidance o Comments may be emailed to: [email protected] 52

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