Recently, an Examiner reminded me about certain language that could invoke the “means for … ” limitation in a claim. He gave me a non-exhaustive list of non-functional terms that may likewise invoke 35 U.S.C. 112, paragraph 6, even though “means for” or “step for” is not used:
a) “mechanism for … “;
b) “module for … “;
c) “device for … “;
d) “unit for … “;
e) “component for … “;
f) “element for … “;
g) “member for … “;
h) “apparatus for … ”
i) “machine for … “;
j) “system for … “;
However, “circuit for” has been determined to be a “structural term” that does not invoke 35 U.S.C. 112, paragraph 6. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583-84 (Fed. Cir. 1996).
One source for explaining the different in terms is Federal Register, Vol. 76, No. 26 (Wednesday, February 9, 2011), at first full paragraph, center column, page 7167. There, it states that “examiners should determine whether the claim limitation uses a non-structural term,” or a term that is simply a substitute for “means for.” Other terms that are safe to use include “detent mechanism,” “digital detector for,” “connector assembly,” and “perforation.” Expressions that invoke “means for” include: “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” and “system for.”
The lesson is that special care should be taken when drafting claims, especially when the invention is not clearly defined, or when the invention is directed to a computer-implemented method and some apparatus claims are desired.
Examiners at the U.S. Patent Office (USPTO) are supposed to make sure the disclosure in the Specification matches the extent of the claims. The claims are the legally enforceable language of an issued patent. The Manual of Patent Examining Procedure (MPEP), section 1302.01 issues a mandate to Examiners. It states:
“When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.”
This section also states that an Applicant “is required to modify the brief summary of the invention and restrict the descriptive matter so as to be in harmony with the claims.” In the years that I have been practicing, I have never been required to do so.
However, I have been rejected under 35 U.S.C. § 112 for making a claim amendment that was not disclosed in the original submission to the USPTO. MPEP 1302.01 states the following, and actually seems to side with inventors, applicants and patent attorneys who submit claim amendments to the USPTO (with emphasis added):
“There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of the first paragraph of 35 U.S.C. 112. Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language of the claims and the language of the specification.”
Thus, it is important to carefully include as many details as possible when submitting a patent application to the USPTO.