U.S. Patent and Trademark Office Issues Supplementary Examination Guidelines on “Definiteness” and Related Issues

The U.S. Patent and Trademark Office recently released a notice entitled “Supplementary Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications.” The guidelines have immediate effect, but the Office will consider written comments received from the public by April 11, 2011.

According to the notice, the guidelines are based on the Office’s current understanding of the law and are believed to be fully consistent with the binding precedent of the relevant courts. The information is primarily intended to assist Office personnel in the examination of claims for compliance with 35 U.S.C. § 112, second paragraph, which requires that claims particularly point out and distinctly claim the subject matter that applicant regards as his or her invention (the “definiteness” requirement). Supplemental information is also provided to assist in the examination of computer-implemented invention claims that contain functional language.

Although the guidelines were developed to assist examiners, they also contain material that may be helpful for patent applicants faced with indefiniteness rejections under § 112, second paragraph.

For example, the guidelines emphasize that during prosecution the claims must be given their “broadest reasonable interpretation.” This standard often seems to result in overly broad interpretations of claim terms. However, the discussion also provides a welcome reminder to examiners that claims should not be read in a vacuum, but rather in light of the entire disclosure and from the perspective of a skilled artisan at the time of invention:

“Under a broadest reasonable interpretation, words of the claims must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art.”

The guidelines also explain that if after applying the broadest interpretation to the claim, “the metes and bounds of the claimed invention are not clear,” the claim is indefinite and should be rejected. This statement is followed by a caution to examiners against confusing claim breadth with claim indefiniteness:
“A broad scope is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. Instead, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear.”

The guidelines highlight areas in which questions of indefiniteness commonly occur, such as when claims contain “indeterminate terms” (e.g. features claimed by function rather than structure, terms of degree, and subjective terms).

With regard to functional claiming, the guidelines note that without reciting particular structures, materials or steps that accomplish the function or achieve the result, the use of functional language in a claim may fail to provide a clear indication of the scope of the claim. However, the discussion of functional claiming also stresses that functional language may be definite when the disclosure provides a general guideline (such as a formula for calculating a recited property) along with examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (such as a representative number of examples that fall within and without the scope of the claim limitation).

With regard to terms of degree (e.g., “substantially interfere”) and subjective terms (e.g., “aesthetically pleasing”), the guidelines explain that a standard should be provided in the specification and/or recognized in the art for measuring the meaning of the term. However, a claim term may be definite “if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree).”

The guidelines also point out that during prosecution “an applicant may also overcome an indefiniteness rejection by submitting a declaration under 37 CFR 1.132 showing examples that meet the claim limitations and examples that do not” (citing Enzo Biochem, Inc., v. Applera Corp., 731 F.2d 818 (Fed. Cir. 1984), where applicant overcame an indefiniteness rejection over “not interfering substantially” claim language by submitting a declaration listing eight specific linkage groups that applicant declared did not “substantially interfere” with hybridization or detection).

In the section relating primarily to “computer-implemented inventions,” the guidelines note that such inventions are often disclosed and claimed in terms of their functionality, because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. According to the guidelines, the disclosure is sufficient if the specification describes the computer and the algorithm that perform the claimed function in sufficient detail such that one of skill in the art “would know how to program the disclosed computer to perform the necessary steps.” The guidelines further note that applicant “may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure” (citing Finisar Corp. v. DirectTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008)).

Read/download the guidelines here

Prepared by Lisa E. Stahl, Ph.D.