MPEP 2182: Difference between revisions

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As noted in MPEP § 2181, in In re Donaldson Co.,
'''Why should claim language under examination be given its broadest reasonable interpretation?'''
16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) the
* to ensure that the statutory presumption of validity attributed to each claim of an issued patent is warranted by the search and examination conducted by the examiner.
Federal Circuit recognized that it is important to
* to ensure that the scope of protection afforded by patents issued are not unnecessarily limited by the latest interpretation of means-plus-statutory provisions.
retain the principle that claim language should be  
* to avoid the necessity for a patent specification to become a catalog of existing technology.
given its broadest reasonable interpretation. This principle
** The specification need not describe the equivalents of the structures, material, or acts corresponding to the means- (or step-) plus-function claim element.
is important because it helps insure that the statutory  
** A patent specification need not teach, and preferably omits, what is well known in the art.
presumption of validity attributed to each claim  
of an issued patent is warranted by the search and  
examination conducted by the examiner. It is also
important from the standpoint that the scope of protection  
afforded by patents issued prior to Donaldsonare not unnecessarily limited by the latest interpretation  
of this statutory provision. Finally, it is important
from the standpoint of avoiding the necessity for a  
patent specification to become a catalogue of existing  
technology. The specification need not describe the  
equivalents of the structures, material, or acts corresponding  
to the means- (or step-) plus-function claim  
element. See In re Noll, 545 F.2d 141, 149-50, 191
USPQ 721, 727 (CCPA 1976) (“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). A patent specification need not teach, and  
preferably omits, what is well known in the art.
Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802
F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986).


The Donaldson decision thus does not substantially
The application of a prior art reference to a means or step plus function limitation requires that the prior art element perform the identical function specified in the claim. However, if a prior art reference teaches identity of function to that specified in a claim, then under Donaldson an examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification which has been identified as corresponding to the claimed means or step plus function.
alter examining practice and procedure relative to the
scope of the search. Both before and after Donaldson,
the application of a prior art reference to a means or  
step plus function limitation requires that the prior art  
element perform the identical function specified in the  
claim. However, if a prior art reference teaches identity  
of function to that specified in a claim, then under  
Donaldson an examiner carries the initial burden of  
proof for showing that the prior art structure or step is  
the same as or equivalent to the structure, material, or  
acts described in the specification which has been  
identified as corresponding to the claimed means or  
step plus function.


The “means or step plus function” limitation should  
A "means or step plus function" limitation should be interpreted in a manner consistent with the specification  
be interpreted in a manner consistent with the specification  
disclosure. Two-step analysis involved in construing means-plus-function limitations:
disclosure. The Federal Circuit explained the
two step analysis involved in construing means-plus-
function limitations in Golight Inc. v. Wal-Mart Stores
Inc., 355 F.3d 1327, 1333-34, 69 USPQ2d 1481, 1486
(Fed. Cir. 2004):  


The first step in construing a means-plus-function claim
# Define the particular function of the claim limitation.
limitation is to define the particular function of the claim  
# Look to the specification and identify the corresponding structure for that function.
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d
#* 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.
1369, 1376 [58 USPQ2d 1801, 1806] (Fed. Cir. 2001).
“The court must construe the function of a means-plus-
function limitation to include the limitations contained in
the claim language, and only those limitations.” Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1113 [63 USPQ2d 1725, 1730] (Fed. Cir. 2002)…. The
next step in construing a means-plus-function claim limitation
is to look to the specification and identify the corresponding  
structure for that function. “Under this second
step, ‘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.’” Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 [68
USPQ2d 1263, 1267] (Fed. Cir. 2003) (quoting B. Braun


If the specification defines what is meant by the limitation for the purposes of the claimed invention, the
examiner should interpret the limitation as having that meaning. If no definition is provided, some judgment
must be exercised in determining the scope of the limitation.


 
<noinclude>{{MPEP Section|2181|2100|2183}}</noinclude>
 
 
Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 [43
USPQ2d 1896, 1900] (Fed. Cir. 1997)).
 
If the specification defines what is meant by the limitation
for the purposes of the claimed invention, the
examiner should interpret the limitation as having that
meaning. If no definition is provided, some judgment
must be exercised in determining the scope of the limitation.
See, e.g., B. Braun Medical, Inc. v. Abbott
Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900
(Fed. Cir. 1997) (“We hold that, pursuant to [35
U.S.C. 112, sixth paragraph], 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.” The court refused to
interpret a means-plus-function limitation as corresponding
to a disclosed valve seat structure, as argued
by patentee, since there was no indication in the specification
or prosecution history that this structure corresponds
to the recited function, and there was an
explicitly clear association between that function and
a traverse cross section bar structure disclosed in the
specification.).

Revision as of 17:11, July 10, 2011

← MPEP 2181 ↑ MPEP 2100 MPEP 2183 →


2182 Scope of the Search and Identification of the Prior Art

Why should claim language under examination be given its broadest reasonable interpretation?

  • to ensure that the statutory presumption of validity attributed to each claim of an issued patent is warranted by the search and examination conducted by the examiner.
  • to ensure that the scope of protection afforded by patents issued are not unnecessarily limited by the latest interpretation of means-plus-statutory provisions.
  • to avoid the necessity for a patent specification to become a catalog of existing technology.
    • The specification need not describe the equivalents of the structures, material, or acts corresponding to the means- (or step-) plus-function claim element.
    • A patent specification need not teach, and preferably omits, what is well known in the art.

The application of a prior art reference to a means or step plus function limitation requires that the prior art element perform the identical function specified in the claim. However, if a prior art reference teaches identity of function to that specified in a claim, then under Donaldson an examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification which has been identified as corresponding to the claimed means or step plus function.

A "means or step plus function" limitation should be interpreted in a manner consistent with the specification disclosure. Two-step analysis involved in construing means-plus-function limitations:

  1. Define the particular function of the claim limitation.
  2. Look to the specification and identify the corresponding structure for that function.
    • 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.

If the specification defines what is meant by the limitation for the purposes of the claimed invention, the examiner should interpret the limitation as having that meaning. If no definition is provided, some judgment must be exercised in determining the scope of the limitation.

← MPEP 2181 ↑ MPEP 2100 MPEP 2183 →
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