Office Action Response Argument
(Means-Plus-Function and Indefiniteness under Section 112)

Summary

This office action response template provides arguments that you may use when responding to an office action in which the examiner interprets a claim limitation containing functional language as being governed by 35 U.S.C. § 112(f) (i.e., as a means-plus-function limitation) or as indefinite under 35 U.S.C. § 112(b). This template contains practical guidance and drafting notes. Use this template in combination with Patent Office Action Response to prepare a complete response to an office action that interprets a claim limitation as governed by 35 U.S.C. § 112(f) or indefinite under 35 U.S.C. § 112(b). See also Means-Plus-Function Limitation and Section 112(b) Rejection Checklist and Patent Office Action Response Resource Kit. Under 35 U.S.C. § 112(f): • "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and • such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof" A claim limitation that is expressed in this manner is commonly called a means-plus-function limitation. A structure disclosed in the specification qualifies as a "corresponding" structure only if the specification or the prosecution history clearly links or associates that structure to the function recited in the claim. Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005). The duty to link or associate structure in the specification with the function is the quid pro quo for the convenience of employing the means-plus-function claim format. Kahn v. General Motors Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998). 35 U. S. C. § 112 (b) requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention," (the so-called "definiteness" requirement). A patent claim is indefinite if, read in light of the specification and the prosecution history, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). In a claim with a means-plus-function limitation, if structure corresponding to the recited means-plus-function is not disclosed in the specification, then the claim is indefinite. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1354 (Fed. Cir. 2015) (en banc). A rejection of a claim that may invoke 35 U.S.C. § 112(f) is usually made on the grounds the claim is indefinite under 35 U.S.C. § 112(b). 35 U.S.C. § 112(f) applies when a claim recites "means for …" or an equivalent term. As an example, a claim may recite "means for attaching the first part to the second part." Alternatively, the claim may recite "an attachment for attaching the first part to the second part." These limitations both invoke 35 U.S.C. § 112 (f), and the "means for …" or equivalent language must correspond to a structure described in the specification. Ordinarily, an examiner will state in the office action that the claims are being interpreted under 35 U.S.C. § 112(f) to correspond to a particular structure identified in the specification. For example, when a claim recites "means for attaching…" the Examiner may state that the claims are interpreted under 35 U.S.C. § 112(f) with the "means for attaching" corresponding to the screws, nails, and bolts described on page 5 of the originally-filed specification. You may either agree with or dispute this statement in your response. However, if the corresponding structure is unclear in the specification, or cannot be found in the specification, then the Examiner will likely reject the claims as indefinite under 35 U.S.C. § 112(b). Accordingly, you are likely to receive a rejection for indefiniteness under 35 U.S.C. § 112(b) in the following circumstances: • When it is unclear whether a claim limitation invokes 35 U.S.C. § 112(f) (i.e., a lack of clarity in the claim language itself) • When there is insufficient or no disclosure in the specification or drawings as to the structure for performing the claimed function • When there is supporting disclosure, but the disclosure fails to clearly link the disclosed structure to the claimed function Note that rejections are not made under 35 U.S.C. § 112(f). Although a statement that claims are being interpreted under 35 U.S.C. § 112(f) may be found in an office action, this statement is not itself a rejection. If any rejection is made on the basis that a means-plus-function limitation is not supported by structure in the specification, the rejection will be under 35 U.S.C. § 112(b).