(Synopsis By Sachin Kandhari)

The United States Patent and Trademark Office (USPTO) has released revised guidelines (hereafter, “guidelines”) for Examiners on applying 35 U.S.C. §112 to computer-implemented functional claim limitations during examination.  In this article, we will summarize the guidelines and present key takeaways that will be useful to patent practitioners and clients.

Generally, the guidelines attempt to address “problems with functional claiming,” particularly with regard to purely functional claims that do not specifically recite how a claimed function is achieved, and clarify how application of 35 U.S.C. §112 “can effectively” address these problems. The guidelines are divided into two parts. Part I discusses examination of computer-implemented functional claims having means-plus-function limitations, including claim interpretation under 35 U.S.C. §112(f) and compliance with the definiteness requirement of 35 U.S.C. §112(b). Part II discusses written description and enablement issues related to claims that recite only the idea of a solution without reciting details of how the solution is accomplished, including requirements of 35 U.S.C. §112(a). Regarding Federal Circuit case law, the guidelines primarily cite Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc), which overruled the previously-held presumption that claims lacking the word “means” are not subject to §112(f).

Further, Part I of the guidelines provides specific steps for examining claims including first determining a broadest reasonable interpretation (BRI) of a claim to determine whether or not to invoke 35 U.S.C. §112(f) and performing the 3-prong analysis set forth in MPEP §2181, subsection 1. Although the 3-prong analysis focuses on the claim’s use of “means” or “step” or other “nonce” term, the guidelines encourage Examiners to “nonetheless consider whether the presumption is overcome,” citing Williamson. Notably, the guidelines state that a computer-implemented functional claim (such as the “module” at issue in Williamson) should be subject to the BRI, 3-prong analysis, and that 35 U.S.C. §112(f) application by Examiners to determine whether or not the claim sets forth sufficient structure for performing the recited function must be made explicit in an Office Action. In case a claim is found to recite a computer-implemented functional limitation under 35 U.S.C. §112(f), then the specification “…must disclose an algorithm for performing the claimed specific computer function” for the claim not to be found indefinite under 35 U.S.C. §112(b). The guidelines cite to a dictionary definition of “algorithm” defining the term as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Further, special purpose computer-implemented claims must be supported in the specification with sufficient structure that “…is not simply a general purpose computer…but a special purpose computer as programmed to perform the disclosed algorithm.” Exemplary case law is provided as examples.

Notably, the requirement for disclosure of an algorithm cannot be avoided by arguing that one or ordinary skill in the art is capable of writing software to convert a general purpose computer to a special purpose computer. Further, any described algorithms must be sufficient to perform “the entire claimed function(s)” and this requirement must be applied to each functional limitation. Finally, if a claim containing a computer-implemented 35 U.S.C. §112(f) claim limitation is found to be indefinite under 35 U.S.C. §112(b) for failure to disclose sufficient corresponding structure, it will also lack written description under 35 U.S.C. §112(a).

Part II of the guidelines clarify the written description and enablement requirements of 35 U.S.C. §112(a) in light of Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015). It is observed that “…the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve.” The guidelines instruct Examiners to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention. Notably, for computer-implemented functional claims (as described above), “…the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software…due to the interrelationship and interdependence of computer hardware and software” (emphasis added). The definition of “algorithm” is expanded here to include “…any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Citing Vasudevan, there may be genuine issues of material fact if an expert is needed to opine that an inventor has possession of an invention that achieves the claimed result.

Part II further highlights the enablement requirement as held in Vasudevan, citing the Wands factors in instructing Examiners to “determine what each claim recites and what subject matter is encompassed by the claim when the claim is considered as a whole, not when its parts are analyzed individually.” Further, it is of particular importance with respect to computer-implemented inventions that “…[n]ot everything necessary to practice the invention need be disclosed…” owing to the high level of skill in the art and the similarly high level of predictability in generating programs to achieve an intended result without undue experimentation. Finally, Examiners should consider (1) how broad the claim is with respect to the disclosure, and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.” A rejection for lack of enablement must be made when the specification does not enable the full scope of the claim.

(The above memorandum is for informational purposes only and does not constitute legal advice in any way, and also does not serve as the basis for forming an attorney-client relationship.)