# Presentation: 059815

## 35 U.S.C. 112, 6th Paragraph

- Long V. Le
- SPE, AU 1641
- (703) 305-3399

## 35 USC 112, 6th Paragraph

**Topics**
- 35 U.S.C. 112, 6th Paragraph
- The Donaldson Decision
- Scope of application: method claims
- The Guidelines:  Claim limitations invoking 35 U.S.C 112, 6th Paragraph involve 3-Prong Analysis
- Examination Process:  Initially, 1) must use “means for” or “step for”, 2) must include function, and 3) must not be modified by sufficient structure

## 35 USC 112, 6th Paragraph

**Topics** (continued):
- Factors to be considered in deciding Equivalence:
- Indicia of Equivalence
- Supplemental Guidelines:
- 65 FR 38510 (June 21, 2000)
- 1236 OG (July 25, 2000)

## 35 USC 112, 6th Paragraph

- “An 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.”

## 35 USC 112, 6th Paragraph

- “An element in a claim for a combination may be expressed as a...* means or step for performing a specified function...”*

## 35 USC 112, 6th Paragraph

- ...*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.”*

## The Donaldson decision:

*In re Donaldson Co., *29 USPQ2d 1845 (Fed. Cir. 1994)
- “means-or-step-plus-function” limitation should be interpreted by the PTO with regard to the structure disclosed in the specification corresponding to such language

## The Donaldson decision:

- Examiners must interpret a 35 U.S.C. 112 sixth paragraph limitation in a claim as limited to the corresponding structure material or acts described in the specification and equivalents thereof

## SCOPE OF APPLICATION

- It also applies to method claims:
- “An element in a claim for a combination may be expressed as a _means_ or _step_ for performing the specified function without the recital of structure, material, or _acts_ in support thereof...”

## SCOPE OF APPLICATION

- Paragraph 6 of U.S.C. 112 applied to functional method claims where the element at issue sets forth a step for reaching a particular result, but not the specific technique or procedure used to achieve the result.
- The sixth paragraph is implicated with regard to steps only when the steps plus function without acts are present.  Method or process claims may therefore be written as a step for performing a specified function without the recital of acts in support of the function.  *O.I. Corp. V. Tekmar Co., 115 F.3d 1576, 42 USPQ2d 1777, 1781 (Fed. Cir. 1997)*

## 35 U.S.C 112, 6th Paragraph Guidelines

- Claim limitations will invoke 35 U.S.C. 112, paragraph 6 if the limitations satisfy the 3-prong analysis:
- Must use the phrase “means for” or “step for”
- The “means for” or “step for” must be modified by functional language
- The “means for” or “step for” must not be modified by sufficient structure, material, or acts for achieving the specified function

## 35 U.S.C 112, 6th Paragraph Guidelines

- The first Prong:
- Must use the phrase “means for” or “step for”
- The words “means” and “for” need not be immediately adjacent each other, e.g. “means...for”

## 35 U.S.C 112, 6th Paragraph Guidelines

- Initially, a claim element not using “means for” or “step for” will not be considered to invoke 35 U.S.C. 112, 6th Paragraph
- If applicant wishes to have the claim limitation treated under paragraph 6, applicant must either:
- amend the claim to include the phrase “means for” or “step for”; or
- show that the claim limitation is written as a function to be performed and does not provide sufficient structure, material, or acts

## 35 U.S.C 112, 6th Paragraph Guidelines

- The term “means” gives rise to “a presumption that the inventor used the term advisedly to involve the statutory mandates for means-plus-function clauses.”  *York Products, Inc. v. Central Tractor Farm & Family Center*, 99 F.3d 1568, 1574, 40 USPQ2d 1619, 1623 (Fed. Cir. 1996)
- The presumption is not conclusive.  As the Court states:
- Merely because a named element of a patent claim is followed by the word “means”, however, does not automatically make that element a “means-plus-function” element under 35 U.S.C. 112, Paragraph 6.  *Cole v. Kimberly-Clark Corp.,* 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (fed. Cir. 1996)

## 35 U.S.C 112, 6th Paragraph Guidelines

- The Second Prong:
- The “means for” or “step for” must be modified by functional language
- Claiming a step or series of steps by themselves does not implicate 35 U.S.C. 112, paragraph 6.  Merely claiming a step without recital of a function is not analogous to a means-plus-function.  *O.I. Corp. V. Tekmar Co., *115 F.3d 1576, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997)

## 35 U.S.C 112, 6th Paragraph Guidelines

- The Third Prong:
- The “means for” or “step for” must not be modified by sufficient structure, material, or acts for achieving the specified function
- Where a claim element recites a function, but then goes on to elaborate sufficient structure, material, or acts to perform entirely the recited function, the claim is not in means-plus-function format (*Cole v. Kimberly-Clark Corp., *102 F.3d 524, 531, 41 USPQ2d 101, 1006 (Fed. Cir. 1996), *Laitram Corp. v. Rexnord, Inc., *939 F.2d 1533, 1536, 19 USPQ 1367, 1369 (Fed. Cir. 1991)

## 35 U.S.C 112, 6th ParagraphExamination Process

- The examination process under 35 U.S.C. 112, 6th paragraph: begin by applying the 3-prong analysis
- If the phrase “means for” or “step for” is absent, paragraph 6 is not invoked
- If the phrase “means for” or “step for” is used but either the second or third prong of the test is not satisfied, paragraph 6 is not invoked

**LLe:**

**LLe:**

**LLe:**

## 35 U.S.C 112, 6th ParagraphExamination Process

- If the phrase “means for” or “step for” is absent from the claim limitation, the examiner will treat the claim as NOT invoking 35 U.S.C. 112, 6th Paragraph

## 35 U.S.C 112, 6th ParagraphExamination Process

- Where the phrase “means for” or “step for” is present but the claim limitation does not satisfy the second or third prong of the 3-prong test, the examiner will likewise treat the claim as NOT invoking 35 U.S.C 112, 6th Paragraph
- If the applicant responds by questioning whether the examiner has properly treated the claim, the examiner then provide an explanation

## 35 U.S.C. 112, 6th Paragraph

- Factors to be considered in deciding equivalence
- The element must perform the identical function
- Secondary indicia of equivalence

## 35 U.S.C. 112, 6th Paragraph

- Indicia of Equivalence
- Function – Way – Result:
- 	Same function in substantially same way and produces substantially same result
- Interchangeability
- Structural Equivalent
- Insubstantial Differences

## 35 U.S.C. 112, 6th Paragraph

- If the examiner determines that the prior art element is equivalent to the structure, material, or acts described in the applicant’s specification, examiner can conclude that the prior art anticipates the means-(or step) plus-function limitation
- Examiner should also make 35 U.S.C. 103 rejection where appropriate
- Burden of going forward shifts to applicant

## INTENDED USE

- In apparatus, article, and composition claims:
- Intended use must result in a structural difference between the claimed invention and the prior art
- If the prior art structure is capable of performing the intended use, then it meets the claim.

## INTENDED USE

- In a process of making:
- The intended use must result in a manipulative difference as compared to the prior art