Mar. 18, 2024
The U.S. Patent and Trademark Office (USPTO) issued a memorandum (memo) to examiners setting forth resources available for examining limitations under 35 U.S.C. §112(f), commonly referred to as “means-plus-function” or “step-plus-function” limitations. The guidance further highlighted the importance of properly identifying and interpreting such limitations, as well as creating a clear record regarding such interpretation.
Topics discussed in the memo include noting the rarity of “step-plus-function” limitations; providing a 3-prong analysis for determining whether a claim limitation invokes interpretation of Section 112(f), noting the importance of considering terms used in light of the specification and commonly accepted meaning the art; establishing the interpretation of Section 112(f) limitations in writing during prosecution; and determining the adequacy of the disclosure for defining the boundaries and written description support for the relevant Section 112(f) claim limitation.
For more information, click here to access the memo.
