[Federal Register Volume 65, Number 120 (Wednesday, June 21, 2000)]
[Notices]
[Pages 38510-38516]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-15674]


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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, para. 6

June 16, 2000.
AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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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, para. 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, para. 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 <a href="/cdn-cgi/l/email-protection#523f333536333e373c7c352037373c3e3b373412272122263d7c353d24"><span class="__cf_email__" data-cfemail="bfd2ded8dbded3dad191d8cddadad1d3d6dad9ffcacccfcbd091d8d0c9">[email protected]</span></a> or <a href="/cdn-cgi/l/email-protection#601201194e0308050e20151310140f4e070f16"><span class="__cf_email__" data-cfemail="fe8c9f87d09d969b90be8b8d8e8a91d0999188">[email protected]</span></a>.

SUPPLEMENTARY INFORMATION: The USPTO published ``Interim Supplemental 
Examination Guidelines for Determining the Applicability of 35 U.S.C. 
112 para. 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, para. 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, para. 6 and examiners can clearly determine 
whether or not 35 U.S.C. 112, para. 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''), Mas-
Hamilton 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, para. 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, para. 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, para. 6). The supplemental examination guidelines provide 
applicants with a simple method for clearly stating their intent to 
invoke 35 U.S.C. 112, para. 6. The specific phraseology used by the 
applicant in a

[[Page 38511]]

claim limitation will determine whether the claim limitation invokes 35 
U.S.C. 112, para. 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, 
para. 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, para. 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 Seal-Flex, 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, para. 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, para. 6 applies. 
Because the scope of a claim limitation that invokes 35 U.S.C. 112, 
para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, 
para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 6. In such a case, the examiner will 
apply prior art to the claim limitation without the invocation of 35 
U.S.C. 112, para. 6. In reply to the examiner's Office action, if 
applicant wishes to have the claim limitation treated under 35 U.S.C. 
112, para. 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, para. 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, para. 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-) plus-function element does not 
preclude the applicability of 35 U.S.C. 112, para. 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

[[Page 38512]]

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, para. 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, para. 6. The 
examiner in such case will apply prior art to the claim limitation 
without the invocation of 35 U.S.C. 112, para. 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, para. 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, para. 6, the examiner will include a statement in the 
Office action that the claim limitation is being treated under 35 
U.S.C. 112, para. 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, para. 6. It will not be necessary to 
state in the Office action that 35 U.S.C. 112, para. 6 has not been 
invoked, since the presumption is that applicant did not intend to 
invoke the provisions of 35 U.S.C. 112, para. 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, para. 6.
    Comment 9: One comment suggested that 35 U.S.C. 112, para. 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, para. 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, para. 6 would be proper for, and only for, a 
claim to subject matter that Congress intended 35 U.S.C. 112, para. 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-plus-function 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, para. 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, para. 6 and 
the examiner will not treat the claim limitation under 35 U.S.C. 112, 
para. 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, para. 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

[[Page 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 means-plus-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 para. 6 means-plus-function 
limitation is sufficiently definite under 112 para. 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, para. 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, para. 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, para. 6.

I. Supplemental Examination Guidelines for Claims Subject to 35 
U.S.C. 112, para. 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-plus-
function language is that statutorily mandated in (35 U.S.C. 112, para. 
6) * * *

[[Page 38514]]

[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, para. 
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, para. 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, 
para. 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, para. 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, para. 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, para. 6. If an applicant wishes 
to have the claim limitation treated under 35 U.S.C. 112, para. 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, para. 6.\6\
    Accordingly, these supplemental examination guidelines provide 
applicants with the opportunity to either invoke or not invoke 35 
U.S.C. 112, para. 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, para. 6

    If a claim limitation invokes 35 U.S.C. 112, para. 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, para. 2:

    Although [35 U.S.C. 112, para. 6] statutorily provides that one 
may use means-plus-function 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, para. 
2].\8\

    Whether a claim reciting an element in means-(or step-) plus-
function language fails to comply with 35 U.S.C. 112, para. 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, para. 1.\9\ However, 35 U.S.C. 112, para. 6 does not 
impose any requirements in addition to those imposed by 35 U.S.C. 112, 
para. 1.\10\ Conversely, the invocation of 35 U.S.C. 112, para. 6 does 
not exempt an applicant from compliance with 35 U.S.C. 112, Paras. 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, para. 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-
plus-function 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, para. 1.\14\
    Therefore, a means-(or step-) plus-function claim limitation 
satisfies 35 U.S.C. 112, para. 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-) plus-function 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-) plus-function, 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-) plus-function limitation.

III. Making a Prima Facie Case of 35 U.S.C. 112, para. 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

[[Page 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, para. 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, para. 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, para. 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, para. 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, para. 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-plus-function apparatus claim but lacked 
``step for'' language did not invoke 35 U.S.C. 112, para. 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-Sec. 112 para. 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, para. 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-plus-function format, however, 112 
para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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, para. 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 para. 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.,

[[Page 38516]]

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, para. 6 
since the claimed limitations were described in terms of their 
function, not their mechanical structure).
    7. See 35 U.S.C. 112, para. 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 means-plus-function language meets the 
definiteness requirement in 35 U.S.C. 112, para. 2 so long as the 
specification meets the written description requirement in 35 U.S.C. 
112, para. 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, para. 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-) plus-function 
claim element in compliance with 35 U.S.C. 112, Paras.  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, para. 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, para. 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, para. 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


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