Application of New Form Paragraphs for Addressing Issues ...

Application of New Form Paragraphs for Addressing Issues ...

Application of New Form Paragraphs for Addressing Issues Related to 35 U.S.C. 112(f) or Means-plus-Function Limitations January 2018 Training Purpose Review how to use new 112(f) claim interpretation form paragraphs introduced in the computer based training module (CBT) Addressing 112(f) or Means-plus-Function Limitations in an Office Action using New Form Paragraphs Introduce new form paragraphs to address issues that can arise with 112(f) limitations under 2 112(f) Form Paragraphs Claim Interpretation The CBT introduced three new form paragraphs to establish claim interpretation under 112(f) on the record and

explain the associated presumptions: Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW (Replaces 7.30.04) Presumption overcome: 112(f) not invoked despite means 7.30.07 NEW (Replaces explanation for 7.30.04) 7.30.06 NEW (Replaces explanation for 7.30.04)

3 Transition to New 112(f) Form Paragraphs Claim Interpretation November 2017 Release Broadest Reasonable Interpretation under 112(f) and Presumptions 7.30.05 Replaces 7.30.04 Presumption Overcome: 112(f) invoked without means 7.30.06 Eliminates requirement for examiner explanation about presumptions Presumption Overcome: 112(f) not invoked

despite means 7.30.07 Eliminates requirement for examiner explanation about January 1, 2018 Sunset Use of Means and Presumptions 7.30.04 Use 7.30.05 and if appropriate 7.30.06 and/or 7.30.07 Claim Limitations Interpreted under 112(f) 7.34.21 Not required for claim interpretation Note that explanation regarding corresponding structure (material or acts) may be needed

when making indefiniteness rejections, written description rejections, and/or prior art rejections Remaining as of January 1, 2018 Claim Interpretation Header 7.30.03.h 112 (f) Statutory Basis 7.30.03 Broadest Reasonable Interpretation under 112(f) and Presumptions 7.30.05 Presumption Overcome:

112(f) invoked without means 7.30.06 Presumption Overcome: 112(f) not invoked despite means 7.30.07 4 112(b) Form Paragraphs Issues Related to 112(f) This training module introduces two new form paragraphs for explaining why a 112(f) claim limitation is indefinite under 112(b): 112(b) Statutory Basis 7.30.02 Existing Statement of Rejection for Indefiniteness Invoked 112(f), but the specification does not provide adequate support

Unclear whether 112(f) invoked after performing three-prong test 7.34.01 Existing 7.34.23 NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 NEW Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f) 7.34.17 Applicant asserts 112(f) is invoked 5 New 112(b) Form Paragraph 7.34.23 Inadequate Support in Specification for 112(f) Limitation Addresses situations where a claim limitation properly

invokes 112(f) based on the claim language but fails to have definite boundaries This form paragraph should be used when the specification fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and/or to clearly link the structure, material, or acts to the function. 6 New 112(b) Form Paragraph 7.34.24 Unclear Whether 112(f) Invoked Addresses the situation in which the examiner performs the threeprong test to determine whether a limitation should be interpreted under 112(f) and cannot come to a conclusion (e.g., the claim limitation simply cannot be understood due to a drafting error) It should be rare that the examiner is unable to come to a conclusion as to whether the limitation should be interpreted under 112(f)

To set forth the 112(b) rejection, draft the Office action with: 35 U.S.C. 112(b) Statutory Basis 7.30.02 Existing Statement of Rejection for Indefiniteness Unclear Whether 112(f) Invoked after Performing 3-Prong Test (should be rare) 7.34.01 Existing 7.34.24 NEW 7 Transition to New 112(b) Form Paragraphs November 2017 Release 112(f) is invoked but the specification does not provide adequate support (structure not disclosed, insufficient to perform the entire function, or not linked

to the function) 7.34.23 Consolidates and replaces 7.34.18, 7.34.19, 7.34.20, 7.34.22 112(f) invocation is unclear after performing 3-prong test (should be rare) 7.34.24 Consolidates and replaces 7.34.11, 7.34.16, 7.34.17 March 1, 2018 Sunset Modifier of means lacks function 7.34.11 Unclear whether recited structure precludes 112(f) 7.34.16 Applicant asserts 112(f) is invoked 7.34.17 No (or insufficient) disclosure

of structure 7.34.18 Failure to link structure to function 7.34.19 Specification objected to for only implicit/inherent disclosure 7.34.20 Applicant asserts 112(f) is not Remaining as of March 1, 2018 112(b) Statutory Basis 7.30.02 Statement of Rejection for Indefiniteness 7.34.01 112(f) is invoked but the specification does not provide adequate support (structure not disclosed, insufficient to perform the entire function, or not linked

to the function) 7.34.23 112(f) invocation is unclear after performing 3-prong test (should be rare) 7.34.24 8 Technology-Specific Examples Chemical Electrical Mechanical Click a button to move to the example 9 Chemical Example Chemical Example Disclosure

Alpha-amylase enzymes are specialized proteins that break down large polysaccharides such as starch into smaller saccharide units by severing the chemical bonds between adjacent sugar units. These enzymes are widely used in detergents and cleaning products to remove starch-based stains from clothing. However, these enzymes are sensitive to heat and either stop working or work at reduced efficiency when exposed to the high temperatures (e.g., 80-90 C) used in some washing machines. For example, a naturally occurring bacterial alpha-amylase known as BSG loses 50% of its activity at temperatures above 80 C, and loses all of its activity at temperatures above 90 C. The naturally occurring sequence of BSG is disclosed as SEQ ID NO: 6. The laundry detergents of the present invention comprise a variant alpha-amylase enzyme, and one or more cleaning adjuncts such as a fragrance, surfactant, or germicide. Additionally, a hue in fabrics is maintained by brightening. The variant enzymes are genetically modified variants of BSG. The variants contain non-natural sequence modifications such as substitutions, deletions, or insertions, but must retain at least 90 percent sequence identity to BSG (SEQ ID NO: 6) in order to retain their alpha-amylase activity. Most of the variant enzymes have the same sensitivity to heat as BSG, i.e., they lose 50% of their enzymatic activity at

temperatures above 80 C, and lose all of their activity at 11 Chemical Example Disclosure (cont.) In a preferred embodiment, the laundry detergent composition has increased thermostability at high temperatures relative to BSG. In the context of the present invention, high temperature means temperatures from 80-100 C, preferably about 90 C, and increased thermostability means that more enzymatic activity is retained relative to BSG for at least 30 minutes. Thus, when exposed to a temperature of 90 C, a preferred laundry detergent composition having increased thermostability will retain some measurable enzymatic activity for at least 30 minutes, whereas a laundry detergent composition comprising BSG will not retain any enzymatic activity. It is known in the art that increased thermostability of an enzyme-based detergent composition can be achieved by multiple approaches including sequence modifications of the enzyme, covalent attachment of a stabilizer molecule to the enzyme, adjusting the pH of the laundry detergent composition, or addition of a stabilizer molecule to the laundry detergent

composition, and that each approach produces a different result. In a preferred embodiment, the means for providing increased thermostability to the laundry detergent composition is a sequence modification of the enzyme such as a substitution at one or more positions corresponding to positions 50, 61 and 105 of SEQ ID NO: 6. 12 Chemical Example Claims 5. A laundry detergent composition comprising: a) a cleaning adjunct selected from the group consisting of a fragrance, a surfactant, and a germicide; and b) a variant alpha-amylase enzyme having an amino acid sequence that has at least 90% identity to SEQ ID NO: 6, with c) means for causing the variant alpha-amylase enzyme to have increased thermostability relative to BSG. 6. The laundry detergent composition of claim 5, further comprising: d) means for maintaining a hue in fabrics. Do you see any functional limitations that might need to be analyzed under 112(f)?

13 Chemical Example Claim Interpretation (cont.) 5. A laundry detergent composition comprising: a) a cleaning adjunct selected from the group consisting of a fragrance, a surfactant, and a germicide; and b) a variant alpha-amylase enzyme having an amino acid sequence that has at least 90% identity to SEQ ID NO: 6, with c) means for causing the variant alpha-amylase enzyme to have increased thermostability relative to BSG. Does claim element (c) invoke 112(f)? To answer this question we must consider the 3-prong 14 Chemical Example Claim Interpretation (cont.) 3-prong analysis: (A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific

structural meaning) for performing the claimed function; (B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and (C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function MPEP 2181 15 Chemical Example Claim Interpretation (cont.) c) means for causing the variant alpha-amylase enzyme to have increased thermostability relative to BSG. (A) is met because: claim element (c) recites means (B) is met because: the term means is modified by functional language (causing the variant alpha-amylase enzyme to have increased thermostability) (C) is met because: claim element (c) is not further modified by sufficient structure or material for performing the claimed function. Yes, claim element (c) invokes 112(f). 16

Chemical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function. What is the BRI of claim element (c)? 17 Chemical Example Disclosure (cont.) In a preferred embodiment, the laundry detergent composition has increased thermostability at high temperatures relative to BSG. In the context of the present invention, high temperature means temperatures from 80-100 C, preferably about 90 C, and increased thermostability means that more enzymatic activity is retained relative to BSG for at least 30 minutes. Thus, when exposed to a temperature of 90 C, a preferred laundry detergent composition having increased thermostability will retain some measurable enzymatic activity for at least 30 minutes, whereas a laundry

detergent composition comprising BSG will not retain any enzymatic activity. It is known in the art that increased thermostability of an enzyme-based detergent composition can be achieved by multiple approaches including sequence modifications of the enzyme, covalent attachment of a stabilizer molecule to the enzyme, adjusting the pH of the laundry detergent composition, or addition of a stabilizer molecule to the laundry detergent composition, and that each approach produces a different result. In a preferred embodiment, the means for providing increased thermostability to the laundry detergent composition is a sequence modification of the enzyme such as a substitution at one or more positions corresponding to positions 50, 61 and 105 of SEQ ID NO: 6. 18 Chemical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to the function? Yes, in this case, the specification identifies the means for providing increased thermostability as a sequence

modification of the enzyme and provides an example, which is a substitution at one or more positions corresponding to positions 50, 61 and 105 of SEQ ID NO: 6. Therefore, claim element (c) does not raise any concerns under 112(b). 19 Chemical Example 112 Rejections (cont.) Examiners should keep in mind that whether or not a 112(f) limitation complies with 112(b) is a different issue from whether the limitation is properly supported under 112(a). If a 112(f) limitation is not supported by corresponding structure, material or acts in the specification, the following 112(a) rejections should be considered: Lack of adequate written description if the specification does not describe the claimed invention in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention Lack of an enabling disclosure if one of ordinary skill in the art would not know how to make and use the claimed invention without undue experimentation due to inadequate description of elements to perform

the function For the same reasons provided on the previous slide, claim 20 Chemical Example Claim Interpretation 6. The laundry detergent composition of claim 5, further comprising: d) means for maintaining a hue in fabrics. Does claim element (d) invoke 112(f)? To answer this question we must consider the 3prong analysis 21 Chemical Example Claim Interpretation (cont.) d) means for maintaining a hue in fabrics (A) is met because: claim element (d) recites means, which creates a presumption that 112(f) is invoked. (B) is met because: the means is modified by functional language (maintaining a hue in fabrics) (C) is met because: claim element (d) is not further modified by sufficient structure or material for performing the claimed function.

Yes, claim element (d) invokes 112(f). 22 Chemical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function. What is the BRI of claim element (d)? 23 Chemical Example Claim Interpretation (cont.) Alpha-amylase enzymes are specialized proteins that break down large polysaccharides such as starch into smaller saccharide units by severing the chemical bonds between adjacent sugar units. These enzymes are widely used in detergents and cleaning products to remove starch-based stains from clothing, however, these enzymes are sensitive to heat and either stop working or work at reduced efficiency when exposed to the high

temperatures (e.g., 80-90 C) used in some washing machines. For example, a naturally occurring bacterial alpha-amylase known as BSG loses 50% of its activity at temperatures above 80 C, and loses all of its activity at temperatures above 90 C. The naturally occurring sequence of BSG is disclosed as SEQ ID NO: 6. The laundry detergents of the present invention comprise a variant alpha-amylase enzyme, and one or more cleaning adjuncts such as a fragrance, surfactant, or germicide. Additionally, a hue in fabrics is maintained by brightening. The variant enzymes are genetically modified variants of BSG. The variants contain non-natural sequence modifications such as substitutions, deletions, or insertions, but must retain at least 90 percent sequence identity to BSG (SEQ ID NO: 6) in order to retain their alpha-amylase activity. Most of the variant enzymes have In a preferred embodiment, the laundry detergent composition has increased thermostability at high temperatures relative to BSG. In the context of the present invention, high temperature means temperatures from 80-100 C, preferably about 90 C, and increased thermostability means that more enzymatic activity is retained relative to BSG for at least 30 minutes. Thus,

when exposed to a temperature of 90 C, a preferred laundry detergent composition having increased thermostability will retain some measurable enzymatic activity for at least 30 minutes, whereas a laundry detergent composition comprising BSG will not retain any enzymatic activity. It is known in the art that increased thermostability of an enzyme-based detergent composition can be achieved by multiple approaches including sequence modifications of the enzyme, covalent attachment of a stabilizer molecule to the enzyme, adjusting the pH of the laundry detergent composition, or addition of a stabilizer molecule to the laundry detergent composition, and that each approach produces a different result. In a preferred embodiment, the means for providing increased thermostability to the laundry detergent composition is a sequence modification of the enzyme such as a substitution at one or more positions corresponding to positions 50, 61 and 105 of SEQ ID NO: 6. 24 Chemical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to

the function? No. There is no disclosure of adequate structure to perform the claimed function of maintaining a hue. While the specification describes that the claimed function of maintaining a hue in fabrics is performed by brightening, that term does not adequately identify what structure performs the function as there are many different agents that can brighten, as would be understood by one of ordinary skill in this art. Therefore, claim element (d) does raise concerns under 112(b). 25 Chemical Example 112 Rejections (cont.) Claim element (d) is not supported by corresponding structure, material or acts in the specification, so the following 112(a) rejections should be considered: Lack of written description? Yes. Because the specification does not describe the claimed invention in sufficient detail that one of ordinary skill in the art could reasonably conclude that the inventor had possession of this claimed invention, a rejection under 112(a) must be made for lacking an adequate written description. Lack of enablement?

No. For the purposes of this training, assume that the disclosure contains sufficient information to enable one of ordinary skill in the art to make and use a detergent that includes a brightening agent for maintaining a hue in fabrics without undue experimentation. Therefore, a rejection under 112(a) for lacking an enabling disclosure should not be made in this instance. For the same reasons provided on the previous slide, claim element (d) does raise concerns under 112(a) for lack of written description. 26 Chemical Example Building the Office Action Form Paragraph Description Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means Form Paragraph Number

7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW Include in OA? Claim Claim 5 6 (Replaces 7.30.04) 7.30.06 NEW (Replaces explanation for 7.30.04) 7.30.07 NEW

(Replaces explanation 27 Chemical Example Building the Office Action Form Paragraph Description Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means Form Paragraph Number 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW

Include in OA? Claim Claim 5 6 (Replaces 7.30.04) 7.30.06 NEW (Replaces explanation for 7.30.04) 7.30.07 n/a

n/a n/a n/a NEW (Replaces explanation 28 Chemical Example Building the Office Action (cont.) Form Paragraph Description 112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number Claim 6

7.34.01 Existing NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 Unclear whether 112(f) invoked after performing three-prong test Claim 5 7.30.02 Existing

7.34.23 Invoked 112(f), but the specification does not provide adequate support Include in OA NEW Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f) 7.34.17 Applicant asserts 112(f) is invoked 29 Chemical Example Building the Office Action (cont.)

Form Paragraph Description 112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number 7.30.02 Existing 7.34.01 Existing 7.34.23 Invoked 112(f), but the specification does not provide adequate support Unclear whether 112(f) invoked after performing three-prong test Claim 5 Claim 6 n/a

n/a n/a n/a n/a NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification

7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 Include in OA NEW Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f) 7.34.17 Applicant asserts 112(f) is invoked 30 Chemical Example Building the Office Action (cont.)

Form Paragraph Description Form Paragraph Number 112(a) Statutory Basis 7.30.01 Existing Written Description Rejection 7.31.01 Existing Scope of Enablement Rejection 7.31.03 Existing Include in OA Claim 5 Claim 6

31 Chemical Example Building the Office Action (cont.) Form Paragraph Description Form Paragraph Number Include in OA Claim 5 Claim 6 112(a) Statutory Basis 7.30.01 Existing n/a Written Description Rejection

7.31.01 Existing n/a Scope of Enablement Rejection 7.31.03 Existing n/a n/a 32 Chemical Example Writing the Office Action 7.30.03h Header for Claim Interpretation

7.30.03 112(f) Statement of Statutory Basis 33 Chemical Example Writing the Office Action (cont.) 7.30.05 BRI under 112(f) and presumptions 34 Chemical Example Writing the Office Action (cont.) 7.30.05 BRI under 112(f) and presumptions (cont.)

Previously, examiners would indicate in their claim interpretation under 112(f) each claim limitation that uses the term means and its corresponding structure in the specification that performs the claimed function. The identification of the means and its corresponding structure is no longer required when establishing claim interpretation under 112(f) using new form paragraph 7.30.05. However, it would be appropriate to do so when making a prior 35 Chemical Example Writing the Office Action (cont.) 7.30.02 112(b)

Statutory Basis 7.34.01 Statement of Rejection for Indefiniteness 36 Chemical Example Writing the Office Action (cont.) 7.34.23 Invoked 112(f), but the specification does not provide adequate support When using form paragraph 7.34.23, the examiner should identify the claim limitation that invokes 112(f) in the first bracket (means for maintaining a hue.) and indicate in the second bracket why there is insufficient disclosure of the

corresponding structure. 37 Chemical Example Writing the Office Action (cont.) 7.30.01 112(a) Statutory Basis 38 Chemical Example Writing the Office Action (cont.) 7.31.01 Written Description Rejection When using form paragraph 7.31.01, the examiner should insert the claim(s) in the first bracket. In the second bracket,

identify subject matter not properly described in the application as filed and provide an explanation of their 39 Chemical Example Writing the Office Action (cont.) As previously noted, it would be appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection. The rejection under 102(a)(1) provides a mapping of the elements of the claim and where that element is taught in the prior art reference X (highlighted in blue).

40 Chemical Example Writing the Office Action (cont.) As previously noted, it would be appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection. The rejection under 102(a)(1) provides a mapping of the elements of the claim and where that element is taught in the prior art reference X (highlighted in blue). Complete Office Action can be found on the 112(f) Training Material microsite 41 Ambiguous 112(f) Limitations When the examiner performs the three-prong test to determine whether a limitation should be interpreted

under 112(f) and cannot come to a conclusion because of ambiguous words in the claim, a rejection under 112(b) for indefiniteness would be appropriate Use new 112(b) Form Paragraph 7.34.24 Identify the claim and claim limitation that causes the claim to be rejected under 112(b), as well as the reason that the three-prong test was inconclusive 42 Takeaways The New Form Paragraphs: Make it easier for examiners to indicate that certain claim limitations are being interpreted under 112(f) and to address issues that can arise with 112(f) limitations under 112(b) Are designed to make selection of the appropriate paragraph simpler and reduce the amount of additional explanation required Encourage the identification of 112(f) limitations in the written record to ensure that the claim interpretation used by the examiner is clearly communicated to the applicant 43

Electrical Example Electrical Example Disclosure Applicant invented a computer-assisted color-editing system for editing and reproducing color images. During use, a scanner 24 scans an original color image, and produces representative appearance signals (e.g., RGB signals). To improve signal quality, filtering may be applied to the appearance signals to remove noise. The appearance signals are then sent from the scanner to a color translation module (CTM) 50, which is described as hardware (such as aesthetic correction circuitry) or software (such as programming instructions) running on a microprocessor. The color translation module (CTM) 50 is programmed to transform the appearance signals into modified appearance signals representative of a reproduction image, by a user interacting with the system via user input device 4 to introduce aesthetically desired alterations (e.g., user-selected adjustments to the hue, saturation and luminance) into the reproduction image as it is simultaneously shown on display 40. More specifically, user input device 4 receives 8-bit adjustment values (VADA) for each adjustment component (e.g., hue, saturation, luminance) which are added as vectors to the input appearance signals (VA) in color translation module (CTM) 50 to produce the modified appearance signals as VMA = VA+VADA. Once the user is satisfied with the appearance of the reproduction image, the color translation module (CTM) 50 sends the modified appearance

signals to disk memory 60. In one embodiment, the aesthetic correction circuitry is an electrical circuit having an input of the appearance signals produced by the scanner, a design that permits interactive introduction of aesthetically desired alterations into the appearance signals, and an output The transformation of the appearance signals by the color translation module (CTM) 50 results in an improved reproduction image even when the reproduction image is formed from a smaller number of colorants than the original image (as is typical when a color photograph is reproduced for printing on an inexpensive inkjet printer). 45 Electrical Example Claims 5. A computer-assisted color-editing system, comprising: a) a scanner that produces appearance signals representative of a color image; b) a color translation module for producing modified appearance signals representative of a reproduction image based on user input introducing aesthetically desired alterations into the appearance signals; c) a display on which the modified appearance signals are displayed as the reproduction image; and d) a disk memory in which the modified appearance signals are stored.

6. The computer-assisted color-editing system of claim 5, further comprising: e) unit for removing noise from the appearance signals produced by the scanner. Do you see any functional limitations that might need to be analyzed under 112(f)? 46 Electrical Example Claim Interpretation (cont.) 5. A computer-assisted color-editing system, comprising: a) a scanner that produces appearance signals representative of a color image; b) a color translation module for producing modified appearance signals representative of a reproduction image based on user input introducing aesthetically desired alterations into the appearance signals; c) a display on which the modified appearance signals are displayed as the reproduction image; and d) a disk memory in which the modified appearance signals are stored. Does claim element (b) invoke 112(f)? To answer this question we must consider the 3-prong analysis

47 Electrical Example Claim Interpretation (cont.) 3-prong analysis: (A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and (C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function MPEP 2181 48 Electrical Example Claim Interpretation (cont.) b) a color translation module for producing modified appearance signals representative of a reproduction image based on user input introducing

aesthetically desired alterations into the appearance signals; (A) is met because: claim element (b) recites a color translation module, which is a generic placeholder for means. The specification recites that the module can be hardware (such as a circuit) or software (such as programming instructions) running on a microprocessor. No specific definition for the term module is provided or recognized in the art. (B) is met because: the generic placeholder (the color translation module) is modified by functional language (for producing modified appearance signals). (C) is met because: claim element (b) is not further modified by sufficient structure or material for performing the claimed function. Yes, claim element (b) invokes 112(f). 49 Electrical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function. What is the BRI of claim element (b)?

50 Electrical Example Disclosure Applicant invented a computer-assisted color-editing system for editing and reproducing color images. During use, a scanner 24 scans an original color image, and produces representative appearance signals (e.g., RGB signals). To improve signal quality, filtering may be applied to the appearance signals to remove noise. The appearance signals are then sent from the scanner to a color translation module (CTM) 50, which is described as hardware (such as aesthetic correction circuitry) or software (such as programming instructions) running on a microprocessor. The color translation module (CTM) 50 is programmed to transform the appearance signals into modified appearance signals representative of a reproduction image, by a user interacting with the system via user input device 4 to introduce aesthetically desired alterations (e.g., user-selected adjustments to the hue, saturation and luminance) into the reproduction image as it is simultaneously shown on display 40. More specifically, user input device 4 receives 8-bit adjustment values (VADA) for each adjustment component (e.g., hue, saturation, luminance) which are added as vectors to the input appearance signals (VA) in color translation module (CTM) 50 to produce the modified appearance signals as VMA = VA+VADA. Once the user is satisfied with the appearance of the reproduction image, the color translation module (CTM) 50 sends the modified appearance

signals to disk memory 60. In one embodiment, the aesthetic correction circuitry is an electrical circuit having an input of the appearance signals produced by the scanner, a design that permits interactive introduction of aesthetically desired alterations into the appearance signals, and an output The transformation of the appearance signals by the color translation module (CTM) 50 results in an improved reproduction image even when the reproduction image is formed from a smaller number of colorants than the original image (as is typical when a color photograph is reproduced for printing on an inexpensive inkjet printer). 51 Electrical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to the function? Yes, the specification discloses a color translation module for performing the claimed function of producing modified appearance signals representative of a reproduction image

based on user input introducing aesthetically desired alterations into the appearance signals. Therefore, claim element (b) does not raise any concerns under 112(b). 52 Electrical Example 112 Rejections (cont.) Examiners should keep in mind that whether or not the 112(f) limitation complies with 112(b) is a different issue from whether the limitation is properly supported under 112(a) If a 112(f) limitation is not supported by corresponding structure, material or acts in the specification, the following 112(a) rejections should be considered: Lack of adequate written description if the specification does not describe the claimed invention in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention Lack of an enabling disclosure if one of ordinary skill in the art would not know how to make and use the claimed invention without undue experimentation due to inadequate description of elements to perform the function For the same reasons provided on the previous slide, claim

53 Electrical Example Claim Interpretation 6. The computer-assisted color-editing system of claim 5, further comprising: e) unit for removing noise from the appearance signals produced by the scanner. Does claim element (e) invoke 112(f)? To answer this question we must consider the 3prong analysis 54 Electrical Example Claim Interpretation (cont.) e) unit for removing noise from the appearance signals produced by the scanner. (A) is met because: the claim element recites unit, which is a generic placeholder for means. The specification does not provide a special definition for this term and one of ordinary skill in the art would not understand this term to be structural. (B) is met because: the unit is modified by functional language (removing noise) (C) is met because: the claim element is not further modified by sufficient

structure or material for performing the claimed function. Yes, claim element (e) invokes 112(f). 55 Electrical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function. What is the BRI of claim element (e)? 56 Electrical Example Disclosure Applicant invented a computer-assisted color-editing system for editing and reproducing color images. During use, a scanner 24 scans an original color image, and produces representative appearance signals (e.g., RGB signals). To improve signal quality, filtering may be applied to the appearance signals to remove noise. The appearance signals are then sent from the scanner to a color translation module (CTM) 50, which is described as hardware (such as aesthetic

correction circuitry) or software (such as programming instructions) running on a microprocessor. The color translation module (CTM) 50 is programmed to transform the appearance signals into modified appearance signals representative of a reproduction image, by a user interacting with the system via user input device 4 to introduce aesthetically desired alterations (e.g., user-selected adjustments to the hue, saturation and luminance) into the reproduction image as it is simultaneously shown on display 40. More specifically, user input device 4 receives 8-bit adjustment values (VADA) for each adjustment component (e.g., hue, saturation, luminance) which are added as vectors to the input appearance signals (VA) in color translation module (CTM) 50 to produce the modified appearance signals as VMA = VA+VADA. Once the user is satisfied with the appearance of the reproduction image, the color translation module (CTM) 50 sends the modified appearance signals to disk memory 60. In one embodiment, the aesthetic correction circuitry is an electrical circuit having an input of the appearance signals produced by the scanner, a design that permits interactive introduction of aesthetically desired alterations into the appearance signals, and an output The transformation of the appearance signals by the color translation module (CTM) 50 results in an improved reproduction image even when the reproduction image is formed from a smaller number of colorants than the original image (as is typical

when a color photograph is reproduced for printing on an inexpensive inkjet printer). 57 Electrical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to the function? No. There is no disclosure of adequate structure, either explicitly or inherently, to perform the claimed function of removing noise. The function of removing noise from the appearance signals is performed by filtering. The use of the term filtering is not adequate structure because it is a term referring to removing certain unwanted features of a signal and can be performed in any number of ways in hardware, software, or a combination of the two. Therefore, claim element (e) does raise concerns under 112(b). 58 Electrical Example 112 Rejections (cont.) Claim element (e) is not supported by corresponding structure,

material or acts in the specification, so the following 112(a) rejections should be considered: Lack of written description? Yes. Because the specification does not describe the claimed invention in sufficient detail that one of ordinary skill in the art could reasonably conclude that the inventor had possession of the claimed invention, a rejection under 112(a) must be made for lacking an adequate written description. Lack of enablement? No. For the purposes of this training, assume that the disclosure contains sufficient information to enable one of ordinary skill in the art to make and use a filter for removing noise from the appearance signals without undue experimentation. Therefore, a rejection under 112(a) for lacking an enabling disclosure should not be made in this instance. For the same reasons provided on the previous slide, claim element (e) does raise concerns under 112(a) for lack of written description. 59

Electrical Example Building the Office Action Form Paragraph Description Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means Form Paragraph Number 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW Include in OA? Claim Claim

5 6 (Replaces 7.30.04) 7.30.06 NEW (Replaces explanation for 7.30.04) 7.30.07 NEW (Replaces explanation 60 Electrical Example Building the Office Action Form Paragraph Description Claim Interpretation Header

112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means Form Paragraph Number 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW Include in OA? Claim Claim 5 6

(Replaces 7.30.04) 7.30.06 NEW (Replaces explanation for 7.30.04) 7.30.07 n/a n/a NEW (Replaces explanation

61 Electrical Example Building the Office Action (cont.) Form Paragraph Description 112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number Claim 6 7.34.01 Existing NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function

7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 Unclear whether 112(f) invoked after performing three-prong test Claim 5 7.30.02 Existing 7.34.23 Invoked 112(f), but the specification does not provide adequate support Include in OA NEW

Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f) 7.34.17 Applicant asserts 112(f) is invoked 62 Electrical Example Building the Office Action (cont.) Form Paragraph Description 112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number 7.30.02 Existing 7.34.01 Existing

7.34.23 Invoked 112(f), but the specification does not provide adequate support Unclear whether 112(f) invoked after performing three-prong test Claim 5 Claim 6 n/a n/a n/a

n/a n/a NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 Include in OA NEW

Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f) 7.34.17 Applicant asserts 112(f) is invoked 63 Electrical Example Building the Office Action (cont.) Form Paragraph Description Form Paragraph Number 112(a) Statutory Basis 7.30.01 Existing

Written Description Rejection 7.31.01 Existing Scope of Enablement Rejection 7.31.03 Existing Include in OA Claim 5 Claim 6 64 Electrical Example Building the Office Action (cont.) Form Paragraph Description Form Paragraph Number

Include in OA Claim 5 Claim 6 112(a) Statutory Basis 7.30.01 Existing n/a Written Description Rejection 7.31.01 Existing n/a Scope of Enablement Rejection

7.31.03 Existing n/a n/a 65 Electrical Example Writing the Office Action 7.30.03h Header for Claim Interpretation 7.30.03 112(f) Statement of Statutory Basis 66 Electrical Example Writing the Office Action

(cont.) 7.30.05 BRI under 112(f) and presumptions 67 Electrical Example Writing the Office Action (cont.) 7.30.05 BRI under 112(f) and presumptions (cont.) Previously, examiners would indicate in their claim interpretation under 112(f) each claim limitation that uses the term means and its corresponding structure in the specification that performs the claimed function. The identification of the means and its corresponding

structure is no longer required when establishing claim interpretation under 112(f) using new form paragraph 7.30.05. However, it would be appropriate 68 Electrical Example Writing the Office Action (cont.) 7.30.06 Presumption overcome: 112(f) invoked without means When using form paragraph 7.30.06, the examiner should identify the claim limitation that invokes 112(f) in the first bracket (color translation module and unit for removing) and indicate in the second bracket that

this appears in claims 5 and 6. 69 Electrical Example Writing the Office Action (cont.) 7.30.02 112(b) Statutory Basis 7.34.01 Statement of Rejection for Indefiniteness 70 Electrical Example Writing the Office Action (cont.) 7.34.23 Invoked 112(f), but the specification does not provide adequate

support When using form paragraph 7.34.23, the examiner should identify the claim limitation that invokes 112(f) in the first bracket (color translation module and unit for removing) and indicate in the second bracket why there is insufficient disclosure of the corresponding structure. 71 Electrical Example Writing the Office Action (cont.) 7.30.01 112(a) Statutory Basis 72

Electrical Example Writing the Office Action (cont.) 7.31.01 Written Description Rejection When using form paragraph 7.31.01, the examiner should insert the claim(s) in the first bracket. In the second bracket, identify subject matter not properly described in the application as filed and provide an explanation of their 73 Electrical Example Writing the Office Action (cont.) As previously noted, it would be

appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection. The rejection under 102(a)(1) provides a mapping of the elements of the claim and where that element is taught in the prior art reference X (highlighted in blue). 74 Electrical Example Writing the Office Action (cont.) As previously noted, it would be appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection. The rejection under 102(a)(1) provides a mapping of the

elements of the claim and where that element is taught in the prior art reference X (highlighted in blue). Complete Office Action can be found on the 112(f) Training Material microsite 75 Ambiguous 112(f) Limitations When the examiner performs the three-prong test to determine whether a limitation should be interpreted under 112(f) and cannot come to a conclusion because of ambiguous words in the claim, a rejection under 112(b) for indefiniteness would be appropriate Use new 112(b) Form Paragraph 7.34.24 Identify the claim and claim limitation that causes the claim to be rejected under 112(b), as well as the reason that the three-prong test was inconclusive 76 Takeaways The New Form Paragraphs: Make it easier for examiners to indicate that certain claim

limitations are being interpreted under 112(f) and to address issues that can arise with 112(f) limitations under 112(b) Are designed to make selection of the appropriate paragraph simpler and reduce the amount of additional explanation required Encourage the identification of 112(f) limitations in the written record to ensure that the claim interpretation used by the examiner is clearly communicated to the applicant 77 Mechanical Example Mechanical Example Disclosure Applicant invented ultrasonic surgical shears 30 for cutting and sealing blood vessels during surgery. During use, a blood vessel is positioned between the surgical blade 32 and the tissue pad 36 on the clamping arm 34. The shears are then closed to apply a clamping force at the clamping surface area 38, defined as the area where the blade 32 and the pad 36 are in close proximity when the clamping arm 34 is in a closed position. The blade 32 mechanically vibrates at a high frequency to transect (cut) and seal the vessel.

A force limiting mechanism 40 functions to limit the user applied clamping force on tissue disposed between the tissue pad 36 and the blade 32 to a range of 60 psi and 210 psi at the clamping surface area 38. The force limiting mechanism 40 is a force limiter coupled to the clamping arm 34, which in one embodiment is designed in the same manner as conventional force limiting mechanisms widely utilized in surgical staplers and throughout the surgical instrument field with the force limiter abutting a portion of the blade handle to limit the user applied clamping force. The pressure range in accordance with this invention results in blood vessel sealing at lower transection times and higher burst pressures (resistance to bursting). 79 Mechanical Example Claims 5. 6. An ultrasonic surgical shears comprising: a) an ultrasonic surgical blade; b) a clamping arm coupled to the blade and operable to open and close toward the blade;

c) a tissue pad attached to the clamping arm, the blade and tissue pad defining a clamping surface area; and d) a force limiting mechanism for limiting an applied clamping force to a range of 60 psi to 210 psi at the clamping surface area. The ultrasonic surgical shears of claim 5, further comprising: e) means for vibrating the blade at a high frequency. Do you see any functional limitations that might need to be analyzed under 112(f)? 80 Mechanical Example Claim Interpretation (cont.) 5. An ultrasonic surgical shears comprising: a) an ultrasonic surgical blade; b) a clamping arm coupled to the blade and operable to open and close toward the blade; c) a tissue pad attached to the clamping arm, the blade and tissue pad defining a clamping surface area; and d) a force limiting mechanism for limiting an applied clamping force to a range of 60 psi to 210 psi at the clamping surface area. Does claim element (d) invoke 112(f)?

To answer this question we must consider the 3-prong analysis 81 Mechanical Example Claim Interpretation (cont.) 3-prong analysis: (A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and (C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function MPEP 2181 82 Mechanical Example Claim Interpretation (cont.) d) force limiting mechanism for limiting an applied clamping force to a range

of 60 psi to 210 psi at the clamping surface area (A) is met because: claim element (d) recites a force limiting mechanism, which is a generic placeholder for means. One of ordinary skill in the art would not recognize the term mechanism in this example as sufficiently definite meaning of structure and the phrase force limiting is simply a recitation of the function. No specific definition of the term mechanism is provided or recognized in the art. (B) is met because: the generic placeholder (the force limiting mechanism) is modified by functional language (for limiting an applied clamping force) (C) is met because: claim element (d) is not further modified by sufficient structure or material for performing the claimed function. Yes, claim element (d) invokes 112(f). 83 Mechanical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function.

What is the BRI of claim element (d)? 84 Mechanical Example Claim Interpretation (cont.) Applicant invented ultrasonic surgical shears 30 for cutting and sealing blood vessels during surgery. During use, a blood vessel is positioned between the surgical blade 32 and the tissue pad 36 on the clamping arm 34. The shears are then closed to apply a clamping force at the clamping surface area 38, defined as the area where the blade 32 and the pad 36 are in close proximity when the clamping arm 34 is in a closed position. The blade 32 mechanically vibrates at a high frequency to transect (cut) and seal the vessel. A force limiting mechanism 40 functions to limit the user applied clamping force on tissue disposed between the tissue pad 36 and the blade 32 to a range of 60 psi and 210 psi at the clamping surface area 38. The force limiting mechanism 40 is a force limiter coupled to the clamping arm 34, which in one embodiment is designed in the same manner as conventional force limiting mechanisms widely utilized in surgical staplers and throughout the surgical instrument field with the force limiter abutting a portion of

the blade handle to limit the user applied clamping force. The pressure range in accordance with this invention results in blood vessel sealing at lower transection times and higher burst pressures (resistance to bursting). 85 Mechanical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to the function? Yes, the specification discloses a force limiter for performing the claimed function of limiting the applied clamping force to the specified range. Therefore, claim element (d) does not raise any concerns under 112(b). 86 Mechanical Example 112 Rejections (cont.) Examiners should keep in mind that whether or not the 112(f) limitation complies with 112(b) is a different issue from whether the limitation is

properly supported under 112(a) If a 112(f) limitation is not supported by corresponding structure, material or acts in the specification, the following 112(a) rejections should be considered: Lack of adequate written description if the specification does not describe the claimed invention in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention Lack of an enabling disclosure if one of ordinary skill in the art would not know how to make and use the claimed invention without undue experimentation due to inadequate description of elements to perform the function For the same reasons provided on the previous slide, claim element (d) does not raise any concerns under 112(a). 87 Mechanical Example Claim Interpretation 6. The ultrasonic surgical shears of claim 5, further comprising: e) means for vibrating the blade at a high frequency. Does claim element (e) invoke 112(f)?

To answer this question we must consider the 3prong analysis 88 Mechanical Example Claim Interpretation (cont.) e) means for vibrating the blade at a high frequency (A) is met because: claim element (e) recites means, which creates a presumption that 112(f) is invoked. (B) is met because: the means is modified by functional language (vibrating) (C) is met because: claim element (e) is not further modified by sufficient structure or material for performing the claimed function. Yes, claim element (e) invokes 112(f). 89 Mechanical Example Claim Interpretation (cont.) Now that it has been determined that the claim invokes 112(f), the examiner must consult the specification to determine the corresponding structure, material, or acts for performing the claimed function. What is the BRI of claim element (e)?

90 Mechanical Example Claim Interpretation (cont.) Applicant invented ultrasonic surgical shears 30 for cutting and sealing blood vessels during surgery. During use, a blood vessel is positioned between the surgical blade 32 and the tissue pad 36 on the clamping arm 34. The shears are then closed to apply a clamping force at the clamping surface area 38, defined as the area where the blade 32 and the pad 36 are in close proximity when the clamping arm 34 is in a closed position. The blade 32 mechanically vibrates at a high frequency to transect (cut) and seal the vessel. A force limiting mechanism 40 functions to limit the user applied clamping force on tissue disposed between the tissue pad 36 and the blade 32 to a range of 60 psi and 210 psi at the clamping surface area 38. The force limiting mechanism 40 is a force limiter coupled to the clamping arm 34, which in one embodiment is designed in the same manner as conventional force limiting mechanisms widely utilized in surgical staplers and throughout the surgical instrument field with the force limiter abutting a portion of the blade handle to limit the user applied clamping force. The pressure range

in accordance with this invention results in blood vessel sealing at lower transection times and higher burst pressures (resistance to bursting). 91 Mechanical Example 112 Rejections Does the disclosure provide adequate structure for performing the entire claimed function and/or clearly link that structure to the function? No. There is no disclosure of adequate structure to perform the claimed function of vibrating. While the specification describes that the claimed function of vibrating the blade at a high frequency is performed mechanically, that term does not identify what structure performs the function. Therefore, claim element (e) does raise concerns under 112(b). 92 Mechanical Example 112 Rejections (cont.) Claim element (e) is not supported by corresponding structure, material or acts in the specification, so the following 112(a)

rejections should be considered: Lack of written description? Yes. Because there is no disclosure of adequate structure to perform the claimed function, the specification does not convey with reasonable clarity to those skilled in the art that the applicant had possession of the claimed invention. A rejection under 112(a) must be made for lacking an adequate written description. Lack of enablement? No. For the purposes of this training, assume the disclosure provides enough information for one of ordinary skill in the art to make and use a mechanical device for vibrating the blade at a high frequency without undue experimentation. Therefore, a rejection under 112(a) for lacking an enabling disclosure should not be made in this instance. For the same reasons provided on the previous slide, claim element (e) does raise concerns under 112(a) for lack of written description 93 Mechanical Example Building the Office Action Form Paragraph Description Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation

(BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means Form Paragraph Number 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW Include in OA? Claim Claim 5 6 (Replaces 7.30.04) 7.30.06

NEW (Replaces explanation for 7.30.04) 7.30.07 NEW (Replaces explanation 94 Mechanical Example Building the Office Action Form Paragraph Description Claim Interpretation Header 112(f) Statutory Basis Broadest Reasonable Interpretation (BRI) under 112(f) and presumptions Presumption overcome: 112(f) invoked without means Presumption overcome: 112(f) not invoked despite means

Form Paragraph Number 7.30.03.h Existing 7.30.03 Existing 7.30.05 NEW Include in OA? Claim Claim 5 6 (Replaces 7.30.04) 7.30.06 NEW

(Replaces explanation for 7.30.04) 7.30.07 n/a n/a n/a NEW (Replaces explanation 95 Mechanical Example Building the Office Action (cont.) Form Paragraph Description

112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number Claim 6 7.34.01 Existing NEW Consolidates and replaces: 7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked

7.34.24 Unclear whether 112(f) invoked after performing three-prong test Claim 5 7.30.02 Existing 7.34.23 Invoked 112(f), but the specification does not provide adequate support Include in OA NEW Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f)

7.34.17 Applicant asserts 112(f) is invoked 96 Mechanical Example Building the Office Action (cont.) Form Paragraph Description 112(b) Statutory Basis Statement of Rejection for Indefiniteness Form Paragraph Number 7.30.02 Existing 7.34.01 Existing 7.34.23 Invoked 112(f), but the specification does not provide adequate support Unclear whether 112(f)

invoked after performing three-prong test Claim 5 Claim 6 n/a n/a n/a n/a n/a NEW Consolidates and replaces:

7.34.18 No (or insufficient) disclosure of structure 7.34.19 Failure to link structure to function 7.34.20 Implicit/inherent disclosure in specification 7.34.22 Applicant asserts 112(f) is not invoked 7.34.24 Include in OA NEW Consolidates and replaces: 7.34.11 Modifier of means lacks function 7.34.16 Unclear whether recited structure precludes 112(f)

7.34.17 Applicant asserts 112(f) is invoked 97 Mechanical Example Building the Office Action (cont.) Form Paragraph Description Form Paragraph Number 112(a) Statutory Basis 7.30.01 Existing Written Description Rejection 7.31.01 Existing Scope of Enablement Rejection

7.31.03 Existing Include in OA Claim 5 Claim 6 98 Mechanical Example Building the Office Action (cont.) Form Paragraph Description Form Paragraph Number Include in OA Claim 5 Claim 6 112(a) Statutory Basis

7.30.01 Existing n/a Written Description Rejection 7.31.01 Existing n/a Scope of Enablement Rejection 7.31.03 Existing n/a n/a

99 Mechanical Example Writing the Office Action 7.30.03h Header for Claim Interpretation 7.30.03 112(f) Statement of Statutory Basis 100 Mechanical Example Writing the Office Action (cont.) 7.30.05 BRI under 112(f) and presumptions

101 Mechanical Example Writing the Office Action (cont.) 7.30.05 BRI under 112(f) and presumptions (cont.) Previously, examiners would indicate in their claim interpretation under 112(f) each claim limitation that uses the term means and its corresponding structure in the specification that performs the claimed function. The identification of the means and its corresponding structure is no longer required when establishing claim interpretation under 112(f) using new form paragraph 7.30.05. However, it would be appropriate 102

Mechanical Example Writing the Office Action (cont.) 7.30.06 Presumption overcome: 112(f) invoked without means When using form paragraph 7.30.06, the examiner should identify the claim limitation that invokes 112(f) in the first bracket (force limiting mechanism for limiting) and indicate in the second bracket that this appears in claim 5. 103 Mechanical Example Writing the Office

Action (cont.) 7.30.02 112(b) Statutory Basis 7.34.01 Statement of Rejection for Indefiniteness 104 Mechanical Example Writing the Office Action (cont.) 7.34.23 Invoked 112(f), but the specification does not provide adequate support When using form paragraph 7.34.23, the examiner should identify the claim limitation that invokes 112(f) in the first

bracket (means for vibrating the blade.) and indicate in the second bracket why there is insufficient disclosure of the corresponding structure. 105 Mechanical Example Writing the Office Action (cont.) 7.30.01 112(a) Statutory Basis 106 Mechanical Example Writing the Office Action (cont.) 7.31.01 Written Description

Rejection When using form paragraph 7.31.01, the examiner should insert the claim(s) in the first bracket. In the second bracket, identify subject matter not properly described in the application as filed and provide an explanation of their 107 Mechanical Example Writing the Office Action (cont.) As previously noted, it would be appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection.

The rejection under 102(a)(1) provides a mapping of the elements of the claim and where that element is taught in the prior art reference X (highlighted in blue). 108 Mechanical Example Writing the Office Action (cont.) As previously noted, it would be appropriate to include the identification of corresponding structure (highlighted in yellow) when making a prior art rejection. The rejection under 102(a)(1) provides a mapping of the elements of the claim and where that element is taught in the prior art reference X (highlighted in blue).

Complete Office Action can be found on the 112(f) Training Material microsite 109 Ambiguous 112(f) Limitations When the examiner performs the three-prong test to determine whether a limitation should be interpreted under 112(f) and cannot come to a conclusion because of ambiguous words in the claim, a rejection under 112(b) for indefiniteness would be appropriate Use new 112(b) Form Paragraph 7.34.24 Identify the claim and claim limitation that causes the claim to be rejected under 112(b), as well as the reason that the three-prong test was inconclusive 110 Takeaways The New Form Paragraphs: Make it easier for examiners to indicate that certain claim limitations are being interpreted under 112(f) and to address issues that can arise with 112(f) limitations under 112(b) Are designed to make selection of the appropriate paragraph simpler and reduce the amount of additional

explanation required Encourage the identification of 112(f) limitations in the written record to ensure that the claim interpretation used by the examiner is clearly communicated to the applicant and is available to those who may later review the patent 111

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