38510 Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices

Modification Requests Received

The applicant requests a modification

to Permit 1144. Permit 1144 authorizes

the sampling for and collection of green,

loggerhead and Kemp’s ridley turtles in

the Ft. Pierce Inlet, for the purposes of

stock assessment to characterize the sea

turtles that use the southern Indian

River Lagoon System. Captured turtles

will be weighed, photographed,

measured, tagged and released.

Modification #2 would extend the

permit expiration date from July 31,

2000 to July 31, 2003.

Dated: June 16, 2000.

Craig Johnson,

Acting Chief, Endangered Species Division,

Office of Protected Resources, National

Marine Fisheries Service.

[FR Doc. 00–15664 Filed 6–20–00; 8:45 am]

BILLING CODE 3510–22–F

DEPARTMENT OF COMMERCE

United States Patent and Trademark

Office

RIN 0651–AB23

Supplemental Examination Guidelines

for Determining the Applicability of 35

U.S.C. 112, ¶ 6

June 16, 2000.

AGENCY: United States Patent and

Trademark Office, Commerce.

ACTION: Notice.

SUMMARY: The U.S. Patent and

Trademark Office (USPTO) is

publishing the final supplemental

examination guidelines to be used by

Office personnel in their review of

patent applications to determine (1)

whether a claim limitation invokes 35

U.S.C. 112, ¶ 6, and (2) whether the

written description describes adequate

corresponding structure, material, or

acts needed to support a claim

limitation under 35 U.S.C. 112, ¶ 6.

Because these supplemental

examination guidelines are interpretive

rules and general statements of policy,

they are exempt from notice and

comments rulemaking under 5 U.S.C.

553(b)(A).

DATES: The supplemental examination

guidelines are effective June 21, 2000.

FOR FURTHER INFORMATION CONTACT:

Magdalen Greenlief, by mail addressed

to Box Comments, Commissioner for

Patents, Washington, DC 20231, or Ray

Chen, Office of the Solicitor, P.O. Box

15667, Arlington, Virginia 22215, or by

facsimile transmission to (703) 305–

8825, or by electronic mail at

magdalen.greenlief@uspto.gov or

ray.chen@uspto.gov.

SUPPLEMENTARY INFORMATION: The

USPTO published ‘‘Interim

Supplemental Examination Guidelines

for Determining the Applicability of 35

U.S.C. 112 ¶ 6’’ in the Federal Register

on July 30, 1999, at 64 FR 41392,

requesting comments from the public on

the supplemental examination

guidelines. The interim supplemental

examination guidelines are adopted

with modifications as suggested by

some of the commentors noted below. In

particular, (1) a statement has been

added to the supplemental examination

guidelines to clearly state that the

guidelines do not constitute substantive

rulemaking and hence do not have the

force and effect of law, (2) the third

prong of the 3-prong analysis for

determining whether a claim limitation

invokes 35 U.S.C. 112, ¶ 6 has been

modified to indicate that the phrase

‘‘means for’’ or ‘‘step for’’ must not be

modified by sufficient structure,

material, or acts for achieving the

specified function, and (3) the last step

of the process for making a prima facie

case of equivalence of a prior art

element during ex parte examination

has been modified to state that where

the examiner finds that the prior art

element is an equivalent of the means-

(or step-) plus-function limitation, the

examiner should provide an explanation

and rationale as to why the prior art

element is an equivalent.

Discussion of Public Comments

Comments were received by the

USPTO from three individuals, two bar

associations, one law firm and one

corporation in response to the request

for comments on the interim

supplemental examination guidelines.

All comments have been fully

considered. One comment was directed

to Markush-type claims which is not

germane to the subject matter addressed

in these guidelines and thus, a response

has not been included in the discussion

below. One comment indicated that the

supplemental examination guidelines

will work well since under the

supplemental examination guidelines

applicants can clearly invoke or not

invoke 35 U.S.C. 112, ¶ 6 and examiners

can clearly determine whether or not 35

U.S.C. 112, ¶ 6 has been invoked. Other

comments generally supported the 3-

prong analysis, but with certain

modifications.

Comment 1: One comment indicated

that it is not clear whether the

guidelines are interpretative and

without force of law, or are intended to

be rules or regulations (or their

equivalent) issued under 35 U.S.C. 6

and having the force of law. The

commentor suggested that a specific

statement be made as to the intent of the

Office.

Response: The suggestion has been

adopted. As stated in the

‘‘Supplementary Information’’ portion

of the interim supplemental

examination guidelines, these

supplemental examination guidelines

are interpretative rules and general

statements of policy, and therefore, are

exempt from notice and comment

rulemaking under 5 U.S.C. 553(b)(A).

The USPTO will further include a

statement in the body of the guidelines

to clearly state that the guidelines do

not constitute substantive rulemaking

and hence do not have the force and

effect of law.

Comment 2: One comment stated that

the proposed guidelines put a great deal

of emphasis on form over substance

since a ‘‘means’’ is a means whether one

uses that word or not.

Response: The Federal Circuit has

stated that when an element of a claim

does not use the term ‘‘means,’’

treatment as a means-plus-function

claim element is generally not

appropriate. See Kemco Sales, Inc. v.

Control Papers Co., 54 USPQ2d 1308,

1313 (Fed. Cir. 2000) (‘‘absence of the

word ‘means’’ creates a presumption

that section 112, paragraph 6 has not

been invoked’’), Al-Site Corp. v. VSI

Int’l, Inc., 174 F.3d 1308, 1318, 50

USPQ2d 1161, 1166 (Fed. Cir. 1999)

(‘‘when an element of a claim does not

use the term ‘means,’ treatment as a

means-plus-function claim element is

generally not appropriate’’), MasHamilton Group v. LaGard, Inc., 156

F.3d 1206, 1213–15, 48 USPQ2d 1010,

1016–18 (Fed. Cir. 1998), and Greenberg

v. Ethicon Endo-Surgery Inc., 91 F.3d

1580, 1584, 39 USPQ2d 1783, 1787

(Fed. Cir. 1996) (‘‘use of the term

‘means’’ (particularly as used in the

phrase ‘means for’) generally invokes

section 112(6) and that the use of a

different formulation generally does

not’’). Even if the term ‘‘means’’ was

used, the Federal Circuit has held, in

certain circumstances, that the claim

limitation does not invoke 35 U.S.C.

112, ¶ 6. See Rodime PLC v. Seagate

Tech., Inc., 174 F.3d 1294, 1303–04, 50

USPQ2d 1429, 1435–36 (Fed. Cir. 1999)

(holding ‘‘positioning means for

moving’’ does not invoke 35 U.S.C. 112,

¶ 6), and Cole v. Kimberly-Clark Corp.,

102 F.3d 524, 530–31, 41 USPQ2d 1001,

1006 (Fed. Cir. 1996) (claim limitation

‘‘perforation means * * * for tearing’’

does not invoke 35 U.S.C. 112, ¶ 6). The

supplemental examination guidelines

provide applicants with a simple

method for clearly stating their intent to

invoke 35 U.S.C. 112, ¶ 6. The specific

phraseology used by the applicant in a

Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices 38511

claim limitation will determine whether

the claim limitation invokes 35 U.S.C.

112, ¶ 6. Furthermore, by following the

plain language of the statute, the

language employed in the patent

claim(s) will place the public on notice

whether a claim limitation invokes 35

U.S.C. 112, ¶ 6.

Comment 3: One comment stated that

the guidelines are contrary to statute

and to the court interpretations of the

statute since the Federal Circuit has

expressly held that a claim is to be

interpreted as under 35 U.S.C. 112, ¶ 6

even if the word ‘‘means’’ is not used as

long as there is an object disclosed (i.e.,

a means) coupled with a function (citing

Raytheon Co. v. Roper Corp., 724 F.2d

951, 220 USPQ 592 (Fed. Cir. 1983)).

Response: The USPTO believes that

the supplemental examination

guidelines are consistent with the

statute and controlling precedent. As

noted by the Federal Circuit in Ethicon

Inc. v. United States Surgical Corp., 135

F.3d 1456, 1463, 45 USPQ2d 1545, 1550

(Fed. Cir. 1998), cert. denied, 525 U.S.

923 (1998), ‘‘use of the word ‘means’

gives rise to a ‘presumption that the

inventor used the term advisedly to

invoke the statutory mandates for

means-plus-function clauses.’’ See also

J. Rader’s concurring opinion in SealFlex, Inc. v. Athletic Track and Court

Constr., 172 F.3d 836, 849–50, 50

USPQ2d 1225, 1233–34 (Fed. Cir. 1999),

stating that use of the phrase ‘‘step for’’

in a method claim raises a presumption

that 35 U.S.C. 112, ¶ 6 applies, whereas,

use of the word ‘‘step’’ by itself or the

phrase ‘‘step of’’ does not invoke a

presumption that 35 U.S.C. 112, ¶ 6

applies. Because the scope of a claim

limitation that invokes 35 U.S.C. 112,

¶ 6 is actually more limited than a claim

limitation stated in structural terms, the

Office wants to avoid inadvertent

invocations of 35 U.S.C. 112, ¶ 6. Cf.

Kemco Sales, Inc. v. Control Papers Co.,

54 USPQ2d 1308, 1316 (Fed. Cir. 2000)

(where sealing of a flap inside an

envelope pocket was not equivalent to

sealing it outside the pocket). If a claim

limitation does not include the phrase

‘‘means for’’ or ‘‘step for,’’ the examiner

will not treat that claim limitation as

invoking 35 U.S.C. 112, ¶ 6. As noted in

the supplemental examination

guidelines, if applicant wants that claim

limitation to be subject to the provisions

of 35 U.S.C. 112, ¶ 6, applicant may do

so by following the options set forth in

the explanation portion of the first

prong of the 3-prong analysis. By

providing applicant with the option of

making a showing that even though the

phrase is not used, the claim limitation

should be treated under 35 U.S.C. 112,

¶ 6 since it is written as a function to

be performed and does not recite

sufficient structure, material, or acts to

perform the claimed function, these

supplemental examination guidelines

are consistent with the Federal Circuit’s

interpretation of 35 U.S.C. 112, ¶ 6.

Comment 4: One comment suggested

that to permit a claim drafter who does

not use the phrase ‘‘means for’’ or ‘‘step

for’’ to make a showing that the claim

limitation should still be treated under

35 U.S.C. 112, ¶ 6, rather than amending

the claim to include the ‘‘means for’’ or

‘‘step for’’ phrase, is unwise. The

commentor suggested that the USPTO

promulgate a rule to always require the

use of the phrase ‘‘means for’’ or ‘‘step

for’’ if applicant wishes to have a claim

limitation be treated under 35 U.S.C.

112, ¶ 6. The commentor further stated

that it is more important to have a clear

and unambiguous, easily administered,

bright-line rule for claim interpretation

than it is to have the rule fine-tuned for

tolerating all conceivable caprice in

claim drafting.

Response: The suggestion has not

been adopted. To promulgate a rule to

always require applicant to use the

phrase ‘‘means for’’ or ‘‘step for’’ in

order to invoke 35 U.S.C. 112, ¶ 6

without providing applicant with an

option to make a showing that even

though the phrase is not used, the claim

limitation should be treated under 35

U.S.C. 112, ¶ 6 since it is written as a

function to be performed and does not

recite sufficient structure, material, or

acts to perform the claimed function

would be inconsistent with the Federal

Circuit’s interpretation of 35 U.S.C. 112,

¶ 6. See, e.g., Mas-Hamilton Group v.

LaGard, Inc., 156 F.3d 1206, 1213–14,

48 USPQ2d 1010, 1016–17 (Fed. Cir.

1998) (’’lever moving element for

moving the lever’’ and ‘‘movable link

member for holding the lever * * * and

for releasing the lever’’ were construed

as means-plus-function limitations

invoking 35 U.S.C. 112, ¶ 6).

Comment 5: One comment suggested

that examiners should be instructed not

to require that ‘‘means for’’ or ‘‘step for’’

language be used since applicants

should be able to decide what language

they choose to use in a claim.

Response: The suggestion has not

been adopted. The USPTO wants to

provide reasonable certainty that 35

U.S.C. 112, ¶ 6 is not invoked unless

applicant wants the claim limitation to

be subject to that provision. To avoid

inadvertent invocations of 35 U.S.C.

112, ¶ 6, the supplemental examination

guidelines set forth a 3-prong analysis

which must be met before a claim

limitation is treated under 35 U.S.C.

112, ¶ 6. As noted in the supplemental

examination guidelines, a claim

limitation that does not include the

phrase ‘‘means for’’ or ‘‘step for’’ will

not be treated by the examiner as

invoking the provisions of 35 U.S.C.

112, ¶ 6. In such a case, the examiner

will apply prior art to the claim

limitation without the invocation of 35

U.S.C. 112, ¶ 6. In reply to the

examiner’s Office action, if applicant

wishes to have the claim limitation

treated under 35 U.S.C. 112, ¶ 6,

applicant has the option to either amend

the claim to include the phrase ‘‘means

for’’ or ‘‘step for’’ or to make a showing

that even though the phrase ‘‘means for’’

or ‘‘step for’’ is not used, the claim

limitation is written as a function to be

performed and does not recite sufficient

structure, material, or acts to perform

the claimed function. If applicant does

not wish to use the phrase ‘‘means for’’

or ‘‘step for,’’ under the supplemental

examination guidelines, applicant must

show that even though the phrase

‘‘means for’’ or ‘‘step for’’ is not used,

the claim limitation is written as a

function to be performed and does not

recite sufficient structure, material, or

acts for performing those functions. See

Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d

1308, 1318, 50 USPQ2d 1161, 1166–67

(Fed. Cir. 1999) (although the claim

limitations ‘‘eyeglass hanger member’’

and ‘‘eyeglass contacting member’’

include a function, these claim

limitations do not invoke 35 U.S.C. 112,

¶ 6 because the claims themselves

contain sufficient structural limitations

for performing those functions).

Comment 6: Two comments indicated

that the presence of some structure

should not prevent the invocation of the

provisions of 35 U.S.C. 112, ¶ 6. The

commentors suggested that the third

prong of the 3-prong analysis be

modified to read that ‘‘the phrase

‘means for’ or ‘step for’ must not be

modified by sufficient structure,

material, or acts for achieving the

claimed function,’’ citing Seal-Flex, Inc.

v. Athletic Track and Court Constr., 172

F.3d 836, 50 USPQ2d 1225 (Fed. Cir.

1999), and Unidynamics Corp. v.

Automatic Prod. Int’l, 157 F.3d 1311, 48

USPQ2d 1099 (Fed. Cir. 1998).

Response: A review of the case law

indicates that the recitation of some

structure in means- (or step-) plusfunction element does not preclude the

applicability of 35 U.S.C. 112, ¶ 6 when

the structure merely serves to further

specify the function of that means. See

Laitram Corp. v. Rexnord, Inc., 939 F.2d

1533, 1536, 19 USPQ2d 1367, 1369

(Fed. Cir. 1991). Therefore, the

suggestion has been adopted to this

extent.

Comment 7: One comment suggested

that the guidelines be clarified to

38512 Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices

indicate what happens if the applicant

neither amends the claim to include the

phrase ‘‘means for’’ or ‘‘step for’’ nor

makes a showing but stands firm on the

claim that the applicant initially

presented and insists that 35 U.S.C. 112,

¶ 6 authorizes the claim. The

commentor indicated that explanation

of this point will benefit the applicants

and the examiners.

Response: If a claim limitation does

not include the phrase ‘‘means for’’ or

‘‘step for,’’ the claim limitation will not

be treated by the examiner as invoking

the provisions of 35 U.S.C. 112, ¶ 6. The

examiner in such case will apply prior

art to the claim limitation without the

invocation of 35 U.S.C. 112, ¶ 6.

In reply to the examiner’s Office

action, if applicant either refuses to

amend the claim to include the phrase

‘‘means for’’ or ‘‘step for’’ or refuses to

make a showing that even though the

phrase ‘‘means for’’ or ‘‘step for’’ is not

used, the claim limitation is written as

a function to be performed and does not

recite sufficient structure, material, or

acts to perform the claimed function,

the next Office action may be made final

in accordance with the practice of

making a second or subsequent action

final (see MPEP 706.07(a)). Applicant

may appeal the examiner’s rejection to

the Board of Patent Appeals and

Interferences pursuant to 35 U.S.C. 134.

Comment 8: One comment suggested

that the examining corps should be

encouraged, and preferably required, to

include a statement regarding 35 U.S.C.

112, ¶ 6 in all Office actions where

appropriate so that applicants may agree

with or argue against the examiner’s

position.

Response: The suggestion is adopted

in part. In those instances where a claim

limitation meets the 3-prong analysis as

set forth in the supplemental

examination guidelines and is being

treated under 35 U.S.C. 112, ¶ 6, the

examiner will include a statement in the

Office action that the claim limitation is

being treated under 35 U.S.C. 112, ¶ 6.

However, if a claim limitation does not

use the phrase ‘‘means for’’ or ‘‘step

for,’’ that is, the first prong of the 3-

prong analysis is not met, the examiner

will not treat such a claim limitation

under 35 U.S.C. 112, ¶ 6. It will not be

necessary to state in the Office action

that 35 U.S.C. 112, ¶ 6 has not been

invoked, since the presumption is that

applicant did not intend to invoke the

provisions of 35 U.S.C. 112, ¶ 6 because

applicant did not use the specific phrase

‘‘means for’’ or ‘‘step for.’’ If a claim

limitation does include the phrase

‘‘means for’’ or ‘‘step for,’’ that is, the

first prong of the 3-prong analysis is

met, but the examiner determines that

either the second prong or the third

prong of the 3-prong analysis is not met,

then in these instances, the examiner

must include a statement in the Office

action explaining the reasons why a

claim limitation which uses the phrase

‘‘means for’’ or ‘‘step for’’ is not being

treated under 35 U.S.C. 112, ¶ 6.

Comment 9: One comment suggested

that 35 U.S.C. 112, ¶ 6 was not intended

to address functional language used for

mere background and away from the

point of novelty and that the Federal

Circuit has not directly addressed the

use of functional language other than

when it occurs at the point of novelty.

The commentor stated that examiners

need not go through the 3-prong

analysis where the functional claiming

language is not at the point of novelty

since 35 U.S.C. 112, ¶ 6 does not apply

to such claim limitations. The

commentor further stated that rejection

for failure to use the ‘‘means for’’ or

‘‘step for’’ language of 35 U.S.C. 112, ¶ 6

would be proper for, and only for, a

claim to subject matter that Congress

intended 35 U.S.C. 112, ¶ 6 to address

(at the point of novelty). The commentor

suggested that the guidelines be

modified accordingly.

Response: The suggestion has not

been adopted. In a recent decision,

Clearstream Wastewater Sys., Inc. v.

Hydro-Action, Inc., 54 USPQ2d 1185,

1188–90 (Fed. Cir. 2000), the Federal

Circuit held that the district court erred

in concluding that the means limitations

for the aerating system could only cover

new elements of the preferred

embodiment. The means-plus-function

limitation was ‘‘means for aerating.’’

The written description disclosed both

a new and inventive flexible-hose

structure and a prior art, rigid-conduit

structure as corresponding structures for

performing the claimed function. The

Federal Circuit read the means-plusfunction terms for the aerating system in

the claims as being capable of covering

the old, rigid-conduit system as well as

the new, flexible-hose system.

Furthermore, it is noted that examiners

do not reject a claim for failure to use

the ‘‘means for’’ or ‘‘step for’’ language

of 35 U.S.C. 112, ¶ 6. There is no

statutory basis for such a rejection. If a

claim limitation does not include the

phrase ‘‘means for’’ or ‘‘step for,’’ the

presumption is that applicant did not

intend to invoke 35 U.S.C. 112, ¶ 6 and

the examiner will not treat the claim

limitation under 35 U.S.C. 112, ¶ 6.

Comment 10: One comment stated

that where the examiner has concluded

that one skilled in the art would

recognize what structure, material, or

acts perform the function, it does not

make sense to require that the applicant

amend the specification to expressly

recite what corresponding structure,

material, or acts perform the function

recited in a claim element. Furthermore,

the commentor finds it even more

troubling to have the examiner, at his

option, state on the record what

structure, material, or acts perform the

claimed function since there is a danger

of unfairly limiting the scope of the

claims.

Response: The USPTO disagrees with

the comment. In B. Braun Medical, Inc.

v. Abbott Lab., 124 F.3d 1419, 1424, 43

USPQ2d 1896, 1900 (Fed. Cir. 1997) the

Federal Circuit stated that ‘‘structure

disclosed in the specification is

‘corresponding’ structure only if the

specification or prosecution history

clearly links or associates that structure

to the function recited in the claim. This

duty to link or associate structure to

function is the quid pro quo for the

convenience of employing Section 112,

Para. 6.’’ It is important to have a clear

prosecution history file record. See

Warner-Jenkinson Co. v. Hilton Davis

Chem. Co., 520 U.S. 17, 41 USPQ2d

1865 (1997); York Prods., Inc. v. Central

Tractor Farm & Family Ctr., 99 F.3d

1568, 1575, 40 USPQ2d 1619, 1624

(Fed. Cir. 1996) (‘‘the record before the

Patent and Trademark Office is often of

critical significance in determining the

meaning of the claims’’). 35 U.S.C. 112,

¶ 6 states that ‘‘[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’’ (emphasis added). If the

disclosure implicitly sets forth the

structure, material, or acts

corresponding to a means-(or step-)

plus-function claim limitation and the

examiner concludes that one skilled in

the art would recognize what structure,

material, or acts perform the claimed

function, the examiner may still require

applicant, pursuant to 37 CFR 1.75

(d)(1), to clarify the record by amending

the written description such that it

expressly recites what structure,

material, or acts perform the claimed

function. If applicant chooses not to

amend the written description to clarify

the record, it is incumbent upon the

examiner in exercising his or her

responsibility to see that the file history

is as complete as is reasonably possible.

The examiner may do so by stating on

the record what structure, material, or

acts perform the function recited in the

means-plus-function limitation. If

Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices 38513

applicant disagrees with the examiner’s

statement, applicant has the obligation

to clarify the record by submitting a

reply explaining the reasons why

applicant disagrees with the statement

made by the examiner.

Comment 11: One comment stated

that ‘‘[t]o use the convenience of

functional claim elements under Section

112(6), an applicant, therefore, must

explicitly describe and link structure

within the specification with the

corresponding functional claim

element.’’ The commentor further stated

that the USPTO’s reliance on the very

fact specific decision of In re Dossel, to

permit applicant to implicitly set forth

the structure corresponding to a meansplus-function limitation in the written

description, is misplaced. The

commentor suggested that the

guidelines be modified to state that

where the written description only

implicitly or inherently sets forth the

structure, material, or acts

corresponding to a means-(or step-)

plus-function, the examiner must

require applicant to explicitly describe

or link a structure within the

specification to the corresponding

functional claim element.

Response: The comment has not been

adopted. In a recent decision, Atmel

Corp. v. Information Storage Devices

Inc., 198 F.3d 1374, 1379, 53 USPQ2d

1225, 1228 (Fed. Cir. 1999), the Federal

Circuit stated that ‘‘the ‘one skilled in

the art’ mode of analysis applies with

equal force when determining whether

a 112 ¶ 6 means-plus-function limitation

is sufficiently definite under 112 ¶ 2.’’

The court further stated that the interim

supplemental examination guidelines

published by the USPTO, which stated

that the ‘‘disclosure of structure

corresponding to a means-plus-function

limitation may be implicit in the written

description if it would have been clear

to those skilled in the art what structure

must perform the function recited in the

means-plus-function limitation,’’ is

consistent with the court’s holding in

the case. In order to make the file record

clear, the examiner should, pursuant to

37 CFR 1.75(d)(1), require applicant to

amend the written description to

expressly recite what structure,

material, or acts perform the function

recited in the claim or the examiner

could state on the record what structure,

material, or acts perform the function

recited in the claim.

Comment 12: One comment was

directed to the process for making a

prima facie case of equivalence of a

prior art element. The commentor stated

that even though this process is not

superseded by these interim

supplemental guidelines, the

commentor is of the opinion that the

process is inconsistent with the Federal

Circuit ruling in In re Donaldson, 16

F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.

1994). In particular, the guidelines state

that if the examiner finds that the prior

art element performs the claimed

function and is not excluded by any

explicit definition provided in the

specification for an equivalent, the

examiner has met the prima facie case

of equivalence. The commentor stated

that this amounts to ignoring the means

disclosed in the specification contrary

to Donaldson. The commentor

suggested that the test for equivalents

should be modified to require the

examiner to provide a rationale for why

the prior art element is an equivalent to

the claimed means since such a

rationale is necessary in order to make

out a prima facie case of equivalence.

Response: The comment has been

adopted. The supplemental examination

guidelines have been modified to state

that if the examiner finds that (1) a prior

art element performs the claimed

function, (2) the prior art element is not

excluded by any explicit definition

provided in the specification for an

equivalent, and (3) the prior art element

is an equivalent, the examiner should

provide an explanation and rationale in

the Office action as to why the prior art

element is an equivalent to the claimed

means. Factors that will support a

conclusion that the prior art element is

an equivalent are:

(1) The prior art element performs the

identical function specified in the claim

in substantially the same way, and

produces substantially the same results

as the corresponding element disclosed

in the specification. Odetics, Inc. v.

Storage Tech. Corp., 185 F.3d 1259,

1267, 51 USPQ2d 1225, 1229–30 (Fed.

Cir. 1999);

(2) A person of ordinary skill in the

art would have recognized the

interchangeability of the element shown

in the prior art for the corresponding

element disclosed in the specification.

Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d

1308, 1316, 50 USPQ2d 1161, 1165

(Fed. Cir. 1999); Chiuminatta Concrete

Concepts, Inc. v. Cardinal Indus., 145

F.3d 1303, 1309, 46 USPQ2d 1752, 1757

(Fed. Cir. 1998); Lockheed Aircraft Corp.

v. United States, 553 F.2d 69, 83, 193

USPQ 449, 461 (Ct. Cl. 1977);

(3) There are insubstantial differences

between the prior art element and the

corresponding element disclosed in the

specification. IMS Tech., Inc. v. Haas

Automation, Inc., 206 F.3d 1422, 1436,

54 USPQ2d 1129, 1138 (Fed. Cir. 2000);

Valmont Indus. v. Reinke Mfg. Co., 983

F.2d 1039, 1043, 25 USPQ2d 1451, 1455

(Fed. Cir. 1993);

(4) The prior art element is a

structural equivalent of the

corresponding element disclosed in the

specification. In re Bond, 910 F.2d 831,

833, 15 USPQ2d 1566, 1568 (Fed. Cir.

1990).

A showing of at least one of the

above-noted factors by the examiner

should be sufficient to support a

conclusion that the prior art element is

an equivalent of the means-(or step-)

plus-function limitation. The examiner

should then conclude that the claimed

limitation is met by the prior art

element. In addition to the conclusion

that the prior art element is an

equivalent, examiners should also

demonstrate, where appropriate, why it

would have been obvious to one of

ordinary skill in the art at the time of

the invention to substitute applicant’s

described structure, material, or acts for

that described in the prior art reference.

See In re Brown, 459 F.2d 531, 535, 173

USPQ 685, 688 (CCPA 1972). The

burden then shifts to applicant to show

that the prior art element is not an

equivalent of the structure, material, or

acts disclosed in the application. See In

re Mulder, 716 F.2d 1542, 1549, 219

USPQ 189, 196 (Fed. Cir. 1983). This

three-step process is consistent with the

requirement that the USPTO gives

claims their broadest reasonable

interpretation. See In re Donaldson Co.,

16 F.3d 1189, 1194, 29 USPQ2d 1845,

1850 (Fed. Cir. 1994) (stating that 35

U.S.C. 112, ¶ 6 ‘‘merely sets a limit on

how broadly the PTO may construe

means-plus-function language under the

rubric of ‘reasonable interpretation’’’).

The USPTO believes that this three-step

process for making a prima facie case of

equivalence is consistent with binding

precedent of the Federal Circuit.

Comment 13: One comment stated the

USPTO does not have the authority to

alter substantive law, and thus, the

USPTO must either go to the Supreme

Court or to Congress to obtain an

amendment to 35 U.S.C. 112, ¶ 6.

Response: The suggestion has not

been adopted. As noted in the response

to comment 12 above, the USPTO

believes that these supplemental

examination guidelines are consistent

with the Federal Circuit’s interpretation

of 35 U.S.C. 112, ¶ 6.

I. Supplemental Examination

Guidelines for Claims Subject to 35

U.S.C. 112, ¶ 6

In February 1994, the Court of

Appeals for the Federal Circuit (Federal

Circuit) held in an en banc decision that

‘‘the ‘broadest reasonable interpretation’

that an examiner may give means-plusfunction language is that statutorily

mandated in (35 U.S.C. 112, ¶ 6) * * *

38514 Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices

[T]he PTO may not disregard the

structure disclosed in the specification

corresponding to such language when

rendering a patentability

determination.’’ In re Donaldson Co., 16

F.3d 1189, 1194–95, 29 USPQ2d 1845,

1850 (Fed. Cir. 1994) (en banc). In May

1994, the United States Patent and

Trademark Office (USPTO) issued

guidelines implementing changes in

examination practice in response to

Donaldson. See Means or Step Plus

Function Limitation Under 35 U.S.C.

112, ¶ 6; Notice, 1162 Off. Gaz. Pat.

Office 59 (May 17, 1994) (‘‘1994

Guidelines’’).

The 1994 Guidelines note that there is

no ‘‘magic’’ language that invokes 35

U.S.C. 112, ¶ 6.1 However, to establish

uniformity to the extent possible, in

view of the recent case law, and to make

the prosecution record clearer, these

guidelines supplement the 1994

Guidelines in assisting examiners to

determine when 35 U.S.C. 112, ¶ 6

should be applied. To the extent these

supplemental guidelines are

inconsistent with the 1994 Guidelines,

the supplemental guidelines are

controlling.

These supplemental examination

guidelines are based on the Office’s

current understanding of the law and

are believed to be fully consistent with

binding precedent of the Supreme

Court, the Federal Circuit and the

Federal Circuit’s predecessor courts.

These supplemental examination

guidelines do not constitute substantive

rulemaking and hence do not have the

force and effect of law.

The USPTO must apply 35 U.S.C.

112, ¶ 6 in appropriate cases, and give

claims their broadest reasonable

interpretation, in light of and consistent

with the written description of the

invention in the application.2 Thus, a

claim limitation will be interpreted to

invoke 35 U.S.C. 112, ¶ 6 if it meets the

following 3-prong analysis:

(1) The claim limitations must use the

phrase ‘‘means for’’ or ‘‘step for’’; 3

(2) the ‘‘means for’’ or ‘‘step for’’ must

be modified by functional language; 4

and

(3) the phrase ‘‘means for’’ or ‘‘step

for’’ must not be modified by sufficient

structure, material, or acts for achieving

the specified function.5

With respect to the first prong of this

analysis, a claim element that does not

include the phrase ‘‘means for’’ or ‘‘step

for’’ will not be considered to invoke 35

U.S.C. 112, ¶ 6. If an applicant wishes

to have the claim limitation treated

under 35 U.S.C. 112, ¶ 6, applicant must

either (1) amend the claim to include

the phrase ‘‘means for’’ or ‘‘step for’’ in

accordance with these guidelines, or (2)

show that even though the phrase

‘‘means for’’ or ‘‘step for’’ is not used,

the claim limitation is written as a

function to be performed and does not

recite sufficient structure, material, or

acts which would preclude application

of 35 U.S.C. 112, ¶ 6.6

Accordingly, these supplemental

examination guidelines provide

applicants with the opportunity to

either invoke or not invoke 35 U.S.C.

112, ¶ 6 based upon a clear and simple

set of criteria.

II. Procedures for Determining Whether

the Written Description Adequately

Describes the Corresponding Structure,

Material, or Acts Necessary To Support

a Claim Limitation Which Invokes 35

U.S.C. 112, ¶ 6

If a claim limitation invokes 35 U.S.C.

112, ¶ 6, it must be interpreted to cover

the corresponding structure, material, or

acts in the specification and

‘‘equivalents thereof.’’ 7 If the written

description fails to set forth the

supporting structure, material or acts

corresponding to the means-(or step-)

plus-function, the claim may not meet

the requirement of 35 U.S.C. 112, ¶ 2:

Although [35 U.S.C. 112, ¶ 6] statutorily

provides that one may use means-plusfunction language in a claim, one is still

subject to the requirement that a claim

‘‘particularly point out and distinctly claim’’

the invention. Therefore, if one employs

means-plus-function language in a claim, one

must set forth in the specification an

adequate disclosure showing what is meant

by that language. If an applicant fails to set

forth an adequate disclosure, the applicant

has in effect failed to particularly point out

and distinctly claim the invention as

required by [35 U.S.C. 112, ¶ 2].8

Whether a claim reciting an element

in means-(or step-) plus-function

language fails to comply with 35 U.S.C.

112, ¶ 2 because the specification does

not disclose adequate structure (or

material or acts) for performing the

recited function is closely related to the

question of whether the specification

meets the description requirement in 35

U.S.C. 112, ¶ 1.9 However, 35 U.S.C.

112, ¶ 6 does not impose any

requirements in addition to those

imposed by 35 U.S.C. 112, ¶ 1.10

Conversely, the invocation of 35 U.S.C.

112, ¶ 6 does not exempt an applicant

from compliance with 35 U.S.C. 112,

¶¶ 1 and 2.11

Under certain limited circumstances,

the written description does not have to

explicitly describe the structure (or

material or acts) corresponding to a

means-(or step-) plus-function

limitation to particularly point out and

distinctly claim the invention as

required by 35 U.S.C. 112, ¶ 2.12 Rather,

disclosure of structure corresponding to

a means-plus-function limitation may be

implicit in the written description if it

would have been clear to those skilled

in the art what structure must perform

the function recited in the means-plusfunction limitation.13 However, the

claims must still be analyzed to

determine whether there exists

corresponding adequate support for

such claim under 35 U.S.C. 112, ¶ 1.14

Therefore, a means-(or step-) plusfunction claim limitation satisfies 35

U.S.C. 112, ¶ 2 if: (1) The written

description links or associates particular

structure, material, or acts to the

function recited in a means-(or step-)

plus-function claim limitation; or (2) it

is clear based on the disclosure in the

application that one skilled in the art

would have known what structure,

material, or acts perform the function

recited in a means-(or step-) plusfunction limitation.

37 CFR 1.75(d)(1) provides, in part,

that ‘‘the terms and phrases used in the

claims must find clear support or

antecedent basis in the description so

that the meaning of the terms in the

claims may be ascertainable by

reference to the description.’’ In the

situation in which the written

description only implicitly or inherently

sets forth the structure, material, or acts

corresponding to a means-(or step-)

plus-function, and the examiner

concludes that one skilled in the art

would recognize what structure,

material, or acts perform the function

recited in a means-(or step-) plusfunction, the examiner should either (1)

have the applicant clarify the record by

amending the written description such

that it expressly recites what structure,

material, or acts perform the function

recited in the claim element 15 or (2)

state on the record what structure,

material, or acts perform the function

recited in the means-(or step-) plusfunction limitation.

III. Making a Prima Facie Case of 35

U.S.C. 112, ¶ 6 Equivalence

If the examiner finds that a prior art

element (1) performs the function

specified in the claim, (2) is not

excluded by any explicit definition

provided in the specification for an

equivalent, and (3) is an equivalent of

the means-(or step-) plus-function

limitation, the examiner should provide

an explanation and rationale in the

Office action as to why the prior art

element is an equivalent. Factors that

will support a conclusion that the prior

art element is an equivalent are:

(1) The prior art element performs the

identical function specified in the claim

in substantially the same way, and

Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices 38515

produces substantially the same results

as the corresponding element disclosed

in the specification; 16

(2) A person of ordinary skill in the

art would have recognized the

interchangeability of the element shown

in the prior art for the corresponding

element disclosed in the

specification; 17

(3) There are insubstantial differences

between the prior art element and the

corresponding element disclosed in the

specification; 18

(4) The prior art element is a

structural equivalent of the

corresponding element disclosed in the

specification.19

A showing of at least one of the

above-noted factors by the examiner

should be sufficient to support a

conclusion that the prior art element is

an equivalent. The examiner should

then conclude that the claimed

limitation is met by the prior art

element. In addition to the conclusion

that the prior art element is an

equivalent, examiners should also

demonstrate, where appropriate, why it

would have been obvious to one of

ordinary skill in the art at the time of

the invention to substitute applicant’s

described structure, material, or acts for

that described in the prior art reference.

See In re Brown, 459 F.2d 531, 535, 173

USPQ 685, 688 (CCPA 1972). The

burden then shifts to applicant to show

that the prior art element is not an

equivalent of the structure, material, or

acts disclosed in the application. See In

re Mulder, 716 F.2d 1542, 1549, 219

USPQ 189, 196 (Fed. Cir. 1983).

To the extent that the three-step

process for making a prima facie case of

equivalence of a prior art element

during ex parte examination set forth in

these supplemental examination

guidelines is inconsistent with the 1994

Guidelines, the supplemental

examination guidelines control. The

supplemental examination guidelines

are consistent with the requirement that

the USPTO give claims their broadest

reasonable interpretation.20 The

specification need not describe the

equivalents of the structures, material,

or acts corresponding to the means-(or

step-) plus-function claim element.21

Where, however, the specification is

silent as to what constitutes equivalents

and the examiner has made out a prima

facie case of equivalence, the burden is

placed upon the applicant to show that

a prior art element which performs the

claimed function is not an equivalent of

the structure, material, or acts disclosed

in the specification.22

Endnotes

1. See 1994 Guidelines at 59.

2. See In re Donaldson Co., 16 F.3d 1189,

1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994)

(in banc) (stating that 35 U.S.C. 112, ¶ 6

‘‘merely sets a limit on how broadly the PTO

may construe means-plus-function language

under the rubric of ‘reasonable

interpretation’’’). The Federal Circuit has

held that applicants (and reexamination

patentees) before the USPTO have the

opportunity and the obligation to define their

inventions precisely during proceedings

before the PTO. See In re Morris, 127 F.3d

1048, 1056–57, 44 USPQ2d 1023, 1029–30

(Fed. Cir. 1997)(35 U.S.C. 112, ¶ 2 places the

burden of precise claim drafting on the

applicant); In re Zletz, 893 F.2d 319, 322, 13

USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner

of claim interpretation that is used by courts

in litigation is not the manner of claim

interpretation that is applicable during

prosecution of a pending application before

the PTO); Sage Prods., Inc. v. Devon Indus.,

Inc., 126 F.3d 1420, 1425, 44 USPQ2d 1103,

1107 (Fed. Cir. 1997) (patentee who had a

clear opportunity to negotiate broader claims

during prosecution but did not do so, may

not seek to expand the claims through the

doctrine of equivalents, for it is the patentee,

not the public, who must bear the cost of its

failure to seek protection for this foreseeable

alteration of its claimed structure). Thus,

applicants and reexamination patentees

before the USPTO have an opportunity and

obligation to specify, consistent with these

supplemental guidelines, when a claim

limitation invokes 35 U.S.C. 112, ¶ 6.

3. Cf. Seal-Flex, Inc. v. Athletic Track and

Court Constr., 172 F.3d 836, 849–50, 50

USPQ2d 1225, 1233–34 (Fed. Cir. 1999)

(Rader, J., concurring) (use of the phrase

‘‘step for’’ in a method claim raises a

presumption that 35 U.S.C. 112, ¶ 6 applies,

whereas, use of the word ‘‘step’’ by itself or

the phrase ‘‘step of’’ does not invoke a

presumption that 35 U.S.C. 112, ¶ 6 applies);

Ethicon, Inc. v. United States Surgical Corp.,

135 F.3d 1456, 1463, 45 USPQ2d 1545, 1550

(Fed. Cir. 1998), cert. denied, 525 U.S. 923

(1998) (‘‘use of the word ‘means’ gives rise

to ‘a presumption that the inventor used the

term advisedly to invoke the statutory

mandates for means-plus-function clauses’ ’’);

O.I. Corp. v. Tekmar, 115 F.3d 1576, 1583,

42 USPQ2d 1777, 1782 (Fed. Cir. 1997)

(method claim that paralleled means-plusfunction apparatus claim but lacked ‘‘step

for’’ language did not invoke 35 U.S.C. 112,

¶ 6). Thus, absent an express recitation of

‘‘means for’’ or ‘‘step for’’ in the limitation,

the broadest reasonable interpretation will

not be limited to ‘‘corresponding structure

* * * and equivalents thereof.’’ Cf. Morris,

127 F.3d at 1055, 44 USPQ2d at 1028 (‘‘no

comparable mandate in the patent statute

that relates the claim scope of non-§ 112 ¶ 6

claims to particular matter found in the

specification’’).

4. See York Prods., Inc. v. Central Tractor

Farm & Family Ctr., 99 F.3d 1568, 1574, 40

USPQ2d 1619, 1624 (Fed. Cir. 1996) (holding

that a claim limitation containing the term

‘‘means’’ does not invoke 35 U.S.C. 112, ¶ 6

if the claim limitation does not link the term

‘‘means’’ to a specific function).

5. See Seal-Flex, 172 F.3d at 849, 50

USPQ2d at 1234 (Rader, J., concurring)

(‘‘Even when a claim element uses language

that generally falls under the step-plusfunction format, however, 112 ¶ 6 still does

not apply when the claim limitation itself

recites sufficient acts for performing the

specified function’’). Cf. Rodime PLC v.

Seagate Tech., Inc., 174 F.3d 1294, 1303–04,

50 USPQ2d 1429, 1435–36 (Fed. Cir. 1999)

(holding ‘‘positioning means for moving’’

does not invoke 35 U.S.C. 112, ¶ 6 because

the claim further provides a list of the

structure underlying the means and the

detailed recitation of the structure for

performing the moving function removes this

element from the purview of 35 U.S.C. 112,

¶ 6); Cole v. Kimberly-Clark Corp., 102 F.3d

524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir.

1996) (holding ‘‘perforation means * * * for

tearing’’ does not invoke 35 U.S.C. 112, ¶ 6

because the claim describes the structure

supporting the tearing function (i.e.,

perforation)). In other cases, the Federal

Circuit has held otherwise. See Unidynamics

Corp. v. Automatic Prod. Int’l, 157 F.3d 1311,

1319, 48 USPQ2d 1099, 1104 (Fed. Cir. 1998)

(holding ‘‘spring means’’ does invoke 35

U.S.C. 112, ¶ 6). During examination,

however, applicants have the opportunity

and the obligation to define their inventions

precisely, including whether a claim

limitation invokes 35 U.S.C. 112, ¶ 6. Thus,

if the phrase ‘‘means for’’ or ‘‘step for’’ is

modified by sufficient structure, material, or

acts for achieving the specified function, the

USPTO will not apply 35 U.S.C. 112, ¶ 6

until such modifying language is deleted

from the claim limitation. See also supra

note 1.

6. While traditional ‘‘means for’’ or ‘‘step

for’’ language does not automatically make an

element a means-(or step-) plus-function

element, conversely, lack of such language

does not necessarily prevent a limitation

from being construed as a means-(or step-)

plus-function limitation. See Signtech USA,

Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356–57,

50 USPQ2d 1372, 1374–75 (Fed. Cir. 1999)

(‘‘ink delivery means positioned on * * *’’

invokes 35 U.S.C. 112, ¶ 6 since the phrase

‘‘ink delivery means’’ is equivalent to ‘‘means

for ink delivery’’); Al-Site Corp. v. VSI Int’l,

Inc., 174 F.3d 1308, 1317–19, 50 USPQ2d

1161, 1166–67 (Fed. Cir. 1999) (although the

claim elements ‘‘eyeglass hanger member’’

and ‘‘eyeglass contacting member’’ include a

function, these claim elements do not invoke

35 U.S.C. 112, ¶ 6 because the claims

themselves contain sufficient structural

limitations for performing those functions);

Seal-Flex, 172 F.3d at 849, 50 USPQ2d at

1234 (Rader, J., concurring) (‘‘claim elements

without express step-plus-function language

may nevertheless fall within 112 ¶ 6 if they

merely claim the underlying function

without recitation of acts for performing that

function . . . In general terms, the

‘underlying function’ of a method claim

element corresponds to what that element

ultimately accomplishes in relationship to

what the other elements of the claim and the

claim as a whole accomplish. ‘Acts,’ on the

other hand, correspond to how the function

is accomplished.); Personalized Media

Communications LLC v. ITC, 161 F.3d 696,

703–04, 48 USPQ2d 1880, 1886–87 (Fed. Cir.

1998); Mas-Hamilton Group v. LaGard, Inc.,

38516 Federal Register / Vol. 65, No. 120 / Wednesday, June 21, 2000 / Notices

156 F.3d 1206, 1213, 48 USPQ2d 1010, 1016

(Fed. Cir. 1998) (‘‘lever moving element for

moving the lever’’ and ‘‘movable link

member for holding the lever * * * and for

releasing the lever’’ were construed as

means-plus-function limitations invoking 35

U.S.C. 112, ¶ 6 since the claimed limitations

were described in terms of their function, not

their mechanical structure).

7. See 35 U.S.C. 112, ¶ 6. See also B. Braun

Medical, Inc. v. Abbott Lab., 124 F.3d 1419,

1424, 43 USPQ2d 1896, 1899 (Fed. Cir.

1997).

8. See Donaldson, 16 F.3d at 1195, 29

USPQ2d at 1850; see also B. Braun Medical,

124 F.3d at 1425, 43 USPQ2d at 1900; and

In re Dossel, 115 F.3d 942, 946, 42 USPQ2d

1881, 1884–85 (Fed. Cir. 1997).

9. See In re Noll, 545 F.2d 141, 149, 191

USPQ 721, 727 (CCPA 1976) (unless the

means-plus-function language is itself

unclear, a claim limitation written in meansplus-function language meets the

definiteness requirement in 35 U.S.C. 112, ¶

2 so long as the specification meets the

written description requirement in 35 U.S.C.

112, ¶ 1).

10. See In re Knowlton, 481 F.2d 1357,

1366, 178 USPQ 486, 492–93 (CCPA 1973).

11. See Donaldson, 16 F.3d at 1195, 29

USPQ2d at 1850; Knowlton, 481 F.2d at 1366,

178 USPQ at 493.

12. See Dossel, 115 F.3d at 946, 42

USPQ2d at 1885. Under proper

circumstances, drawings may provide a

written description of an invention as

required by 35 U.S.C. 112. Vas-Cath, Inc. v.

Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d

1111, 1118 (Fed. Cir. 1991).

13. See Atmel Corp. v. Information Storage

Devices Inc., 198 F.3d 1374, 1379, 53

USPQ2d 1225, 1228 (Fed. Cir. 1999) (stating

that the ‘‘one skilled in the art’’ analysis

should apply in determining whether

sufficient structure has been disclosed to

support a means-plus-function limitation and

that the USPTO’s recently issued proposed

Supplemental Guidelines are consistent with

the court’s holding on this point); Dossel, 115

F.3d at 946–47, 42 USPQ2d at 1885 (‘‘Clearly,

a unit which receives digital data, performs

complex mathematical computations and

outputs the results to a display must be

implemented by or on a general or special

purpose computer (although it is not clear

why the written description does not simply

state ‘computer’ or some equivalent

phrase.)’’).

14. In considering whether there is 35

U.S.C. 112, ¶ 1 support for the claim

limitation, the examiner must consider not

only the original disclosure contained in the

summary and detailed description of the

invention portions of the specification, but

also the original claims, abstract, and

drawings. See In re Mott, 539 F.2d 1291,

1299, 190 USPQ 536, 542–43 (CCPA 1976)

(claims); In re Anderson, 471 F.2d 1237,

1240, 176 USPQ 331, 333 (CCPA 1973)

(claims); Hill-Rom Co. v. Kinetic Concepts,

Inc., 54 USPQ2d 1437 (Fed. Cir. 2000)

(abstract); In re Armbruster, 512 F.2d 676,

678–79, 185 USPQ 152, 153–54 (CCPA 1975)

(abstract); Anderson, 471 F.2d at 1240, 176

USPQ at 333 (abstract); Vas-Cath Inc. v.

Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d

1111, 1117 (Fed. Cir. 1991) (drawings); In re

Wolfensperger, 302 F.2d 950, 955–57, 133

USPQ 537, 541–43 (CCPA 1962) (drawings).

15. Even if the disclosure implicitly sets

forth the structure, material, or acts

corresponding to a means-(or step-) plusfunction claim element in compliance with

35 U.S.C. 112, ¶¶ 1 and 2, the USPTO may

still require the applicant to amend the

specification pursuant to 37 CFR 1.75(d) and

MPEP 608.01(o) to explicitly state, with

reference to the terms and phrases of the

claim element, what structure, material, or

acts perform the function recited in the claim

element. See 35 U.S.C. 112, ¶ 6 (‘‘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.’’ (emphasis added)); see

also B. Braun Medical, 124 F.3d at 1424, 43

USPQ2d at 1900 (holding that ‘‘pursuant to

this provision [35 U.S.C. 112, ¶ 6], structure

disclosed in the specification is

‘corresponding’ structure only if the

specification or prosecution history clearly

links or associates that structure to the

function recited in the claim. This duty to

link or associate structure to function is the

quid pro quo for the convenience of

employing 112, paragraph 6.’’);

Wolfensperger, 302 F.2d at 955, 133 USPQ at

542 (just because the disclosure provides

support for a claim element does not mean

that the USPTO cannot enforce its

requirement that the terms and phrases used

in the claims find clear support or antecedent

basis in the written description).

16. Kemco Sales, Inc. v. Control Papers Co.,

54 USPQ2d 1308, 1315 (Fed. Cir. 2000);

Odetics, Inc. v. Storage Tech. Corp., 185 F.3d

1259, 1267, 51 USPQ2d 1225, 1229–30 (Fed.

Cir. 1999).

17. Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d

1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir.

1999); Chiuminatta Concrete Concepts, Inc.

v. Cardinal Indus., Inc., 145 F.3d 1303, 1309,

46 USPQ2d 1752, 1757 (Fed. Cir. 1998);

Lockheed Aircraft Corp. v. United States, 553

F.2d 69, 83, 193 USPQ 449, 461 (Ct. Cl.

1977).

18. IMS Technology, Inc. v. Haas

Automation, Inc., 206 F.3d 1422, 1436, 54

USPQ2d 1129, 1138 (Fed. Cir. 2000);

Valmont Indus. v. Reinke Mfg. Co., 983 F.2d

1039, 1043, 25 USPQ2d 1451, 1455 (Fed. Cir.

1993).

19. In re Bond, 910 F.2d 831, 833, 15

USPQ2d 1566, 1568 (Fed. Cir. 1990).

20. See Donaldson, 16 F.3d at 1194, 29

USPQ2d at 1850 (stating that 35 U.S.C. 112,

¶ 6 ‘‘merely sets a limit on how broadly the

USPTO may construe means-plus-function

language under the rubric of ‘reasonable

interpretation’ ’’).

21. See Noll, 545 F.2d at 149–50, 191

USPQ at 727 (the meaning of equivalents is

well understood in patent law, and an

applicant need not describe in his

specification the full range of equivalents of

his invention) (citation omitted). Cf.

Hybritech Inc. v. Monoclonal Antibodies,

Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94

(Fed. Cir. 1986) (‘‘a patent need not teach,

and preferably omits, what is well known in

the art’’).

22. See 1994 Guidelines at 60; see also In

re Mulder, 716 F.2d 1542, 1549, 219 USPQ

189, 196 (Fed. Cir. 1983).

Dated: June 15, 2000.

Q. Todd Dickinson,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 00–15674 Filed 6–20–00; 8:45 am]

BILLING CODE 3510–16–P

COMMODITY FUTURES TRADING

COMMISSION

Agency Information Collection

Activities Under OMB Review

AGENCY: Commodity Futures Trading

Commission.

ACTION: Notice.

SUMMARY: In compliance with the

Paperwork Reduction Act (44 U.S.C.

3501 et seq.), this notice announces that

the Information Collection Request (ICR)

abstracted below has been forwarded to

the Office of Management and Budget

(OMB) for review and comment. The

ICR describes the nature of the

information collection and its expected

costs and burden; it includes the actual

data collection instruments, if any.

DATES: Comments must be submitted on

or before July 21, 2000.

FOR FURTHER INFORMATION OR A COPY

CONTACT: Judi E. Payne at CFTC, (202)

418–5268; FAX: (202) 418–5527; email:

jpayne@cftc.gov and refer to OMB

Control No. 3038–0017.

SUPPLEMENTARY INFORMATION:

Title: Market Surveys (OMB Control

No. 3038–0017). This is a request for

extension of a currently approved

information collection.

Abstract: Sections 8(a)(i) and (ii) of

the Commodity Exchange Act provide

that for the efficient execution of the

provisions of the Act and in order to

inform Congress, the Commission may

make investigations concerning futures

markets and may publish general

information from such investigations. In

certain instances in response to abrupt

and substantial changes in market

prices, Congressional inquiry or other

reasons, the Commission may conduct

full market investigations requiring that

all persons holding futures positions on

the date in question in a specific market

be identified. In such cases, the

Commission issues its call for survey

information pursuant to Commission

Rule 21.02, 17 CFR 21.02.

An agency may not conduct or

sponsor, and a person is not required to