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[polar_liu]

A processing system comprising:
an optical device for capturing an image from a selected zone on a surface of an object by a user, wherein the image includes a graphical indicator that is visually negligible and is affixed on the surface of the object;
a processing device coupled to the optical device for receiving the image, the processing device retrieving the graphical indicator from the image and acquiring an additional information corresponding to the graphical indicator by processing and/or transforming the graphical indicators; and
an output device coupled to the processing device for outputting the additional information.

[JSonnabend]

The claim is not strictly means plus function, but to infringe, the accused product will have to both have the structure and perform the function claimed.  (Of course, Fed Cir law on claim construction is somewhat fluid topic by topic, so you may find cases that say exactly the opposite as well -- welcome to the wonderful world of claim construction).

- Jeff

[bleedingpen]

I don't think the burden of proving that claim to be MPF will be easily met. 

My bet would be on that claim being interpreted as outside of paragraph 6. 

[JimIvey]

My understanding is the same as bleedingpen's.  I don't remember the case, but a while ago there was a case where "means" was used without "for" and the result was that the applicant showed intent to avoid Section 112, paragraph 6.

Even with that, I still avoid "means" in claims.

Regards.

[khazzah]

Not to be too picky, but it's an element that invokes 112P6, not a claim.  I'm guessing you're asking if "optical device FOR" element invokes 112P6.

My gut agrees with bleedingpen: "optical device FOR" will be viewed as connoting enough structure to stay out of 112P6. First of all, you start with the presumption that 112P6 does not apply since you didn't say the magic words "means for". Then the presumption goes unrebutted, in my mind, because "optical device" connotes just as much structure as "aesthetic correction circuitry" and "digital data detector" do. [Which is not much structure at all, in my mind.] And the Fed Cir said that both of those phrases avoided 112P6. 

OTOH, the same court that said "digital data detector" was outside 112P6 also characterized "device" as a generic term, which is perhaps a suggestion that "X device" would be within of 112P6? [The Fed. Cir. decision referencing "digital data detector" was Personalized Media.]

[polar_liu]

Thanks  a lot!
1)of course it is very difficult to  proving that claim within 112P6,but there are some opposite example in MPEP,so i am wondering that how to prove that claim to be MPF ?
[MPEP]The following examples illustrate additional situations where the phrase "means for" or "step for" was not used but the Board or the courts determined that the claim limitation falls within the scope of 35 U.S.C. 112, sixth paragraph.
(A) a jet driving device so constructed and located on the rotor as to drive the rotor . . . ["means" unnecessary]. The term "device" coupled with a function is a proper definition of structure in accordance with the last paragraph of 35 U.S.C. 112. The addition of the words "jet driving" to the term "device" merely renders the latter more definite and specific. Ex parte Stanley, 121 USPQ 621 (Bd. App. 1958);
(B) "printing means" and "means for printing" which would have the same connotations. Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967). However, the terms "plate" and "wing," as modifiers for the structureless term "means," specify no function to be performed, and do not fall under the last paragraph of 35 U.S.C. 112;
(C) force generating means adapted to provide . . . . De Graffenreid v. United States, 20 Ct. Cl. 458, 16 USPQ2d 1321 (Ct. Cl. 1990);
(D) call cost register means, including a digital display for providing a substantially instantaneous display for . . . . Intellicall Inc. v. Phonometrics, Inc., 952 F.2d 1384, 21 USPQ2d 1383 (Fed. Cir. 1992);
(E) reducing the coefficient of friction of the resulting film [step plus function; "step" unnecessary], In re Roberts, 470 F.2d 1399, 176 USPQ 313 (CCPA 1973); and
(F) raising the pH of the resultant pulp to about 5.0 to precipitate . . . . Ex parte Zimmerley, 153 USPQ 367 (Bd. App. 1966).

2)except for 1126P,is there other way that i can read some limitation(especificaly the structure of the INDICATOR) in the specification to the claim?

3)a further question ,how to identify an element?
 As to this example,what about   "a graphical indicator "  to be the element invokes 112P6. and the function is " visually negligible"?

[bleedingpen]

2)except for 1126P,is there other way that i can read some limitation(especificaly the structure of the INDICATOR) in the specification to the claim?

Sure, if during prosecution of the application, the practitioner made statements characterizing the INDICATOR as something more than the ordinary meaning of the term. 

[JimIvey]

I'll just note that the case I vaguely recall was from the Federal Circuit and within the last 5-10 years -- much better authority than all the cases cited in the quoted portion of the MPEP.

One of the things I see in the MPEP is difficulty distinguishing hierarchy of authority.  Higher courts are better and, within a given court level, newer is better.  The cited cases there are mostly lower, older courts, the BPAI, and all from about 20 years ago or more.

FWIW, I would think examiners would want to avoid finding S 112, p 6 language in claims as such language is interpreted very narrowly, making rejection more difficult.  It also requires more work -- reading the spec, finding the corresponding parts in the spec, figuring out a very narrow range of equivalents, etc.

Regards.

[Isaac]

FWIW, I would think examiners would want to avoid finding S 112, p 6 language in claims as such language is interpreted very narrowly, making rejection more difficult.  It also requires more work -- reading the spec, finding the corresponding parts in the spec, figuring out a very narrow range of equivalents, etc.

There is a recent software method case in which the BPAI made the effort to construe claims without "means for" as mpf [means plus function] claims invoking 112 6th para.  The BPAI then found that the specification did not provide the required structure for the means plus function element.  Recent federal circuit cases say that the required structure for a software means plus function element is the algorithm for peforming the functionality.

Once a claim is determined to be means plus function, the applicant can no longer rely on the fact that one of ordinary skill would know an algorithm to use given the functionality as in a non mpf case.  112, 6th paragraph requires that the structure for performing the mpf functionality actually be disclosed in the specification.  This means that more disclosure detail is required to claim a software element than to claim an electronic circuit element (at least in mpf format).  Further it provides a motiviation for examiners to find a mpf element.

I suspect that there are some issued patents out there that would be vulnerable to this kind of attack.

Edit.  The BPAI decision mentied above is Ex parte Rodriguez, Appeal No. 2008-000693.

[bleedingpen]

FWIW, I would think examiners would want to avoid finding S 112, p 6 language in claims as such language is interpreted very narrowly, making rejection more difficult.  It also requires more work -- reading the spec, finding the corresponding parts in the spec, figuring out a very narrow range of equivalents, etc.

I once took over prosecution of a case that was written in MPF language.  Upon receiving the first office action, the Examiner included some statement like "the MPF claim elements recite sufficient structure such that they will not be interpreted as MPF claim terms." 

[JimIvey]

There is a recent software method case in which the BPAI made the effort to construe claims without "means for" as mpf [means plus function] claims invoking 112 6th para.  The BPAI then found that the specification did not provide the required structure for the means plus function element.  Recent federal circuit cases say that the required structure for a software means plus function element is the algorithm for peforming the functionality.

First, I've noted many times in here that the BPAI sometimes gets things blatantly wrong.  So, I'd suggest a far amount of skepticism in accepting BPAI as accurate statements of prevailing law.

Second, if I'm reading that right, the BPAI is acting contrary to "recent federal circuit cases".  Or am I reading that wrong.  I think In re Alappat is one of those, holding that an appropriately programmed digital computer is enough structure.

Once a claim is determined to be means plus function, the applicant can no longer rely on the fact that one of ordinary skill would know an algorithm to use given the functionality as in a non mpf case.  112, 6th paragraph requires that the structure for performing the mpf functionality actually be disclosed in the specification.  This means that more disclosure detail is required to claim a software element than to claim an electronic circuit element (at least in mpf format).  Further it provides a motiviation for examiners to find a mpf element.

I suspect that there are some issued patents out there that would be vulnerable to this kind of attack.

Edit.  The BPAI decision mentied above is Ex parte Rodriguez, Appeal No. 2008-000693.

I'm having trouble following this.  If I describe a computer that includes pixelation logic and I recite "means for pixelating", that's not enough?  Note: assume pixelation is known.  What's the rationale for saying that's not enough?

Regards.

[Isaac]

Second, if I'm reading that right, the BPAI is acting contrary to "recent federal circuit cases".  Or am I reading that wrong.  I think In re Alappat is one of those, holding that an appropriately programmed digital computer is enough structure.

You might fairly criticize the BPAI's interpretation of the claim as invoking 112, 6th paragraph, but the Board is following recent FC case law regarding the disclosure needed to support means plus function claims.

See Aristocrat Tech. Australia Pty. Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008),
http://www.cafc.uscourts.gov/opinions/07-1419.pdf

For software based means plus function claims, Arisocrat requires that the disclosure must include the corresponding structure and that the corresponding structure is the algorithm for performing the functionality.  The explicit disclosure of corresponding structure part is straightforward interpretation of 112, 6th.  That the structure means the algorithm is relatively new federal circuit law. 

A reference or mention of a standard algorithm is probably enough, but simply disclosing "pixelating means" and defending that disclosure by saying that one of ordinary skill could select a known algorithm seems like a loser where 112 6th is invoked.

On the other hand, if you claim and disclose a pixelation circuit you can probably avoid invoking 112, 6th paragraph and thus avoid the explicit disclosure requirement altogether.

[JimIvey]

Thanks, Isaac.

I see.  It's not for lack of enablement but for lack of clarity.  M+F language means the structure in the spec and is vague if you can't find that structure.  Got it.  I was thinking enablement, not vagueness.

An interesting thing about that case is that 112p6 was applicable despite the lack of "means for ____ing" in the claims -- though because both parties agreed that 112p6 applied, not because of law controlling that issue.

Regards.

[Isaac]

An interesting thing about that case is that 112p6 was applicable despite the lack of "means for ____ing" in the claims -- though because both parties agreed that 112p6 applied, not because of law controlling that issue.

There is plenty of case law out there supporting interpreting "means" just like "means for".  I'm not all that surprised that Aristocrat did not pursue that issue.

[LivingItUp]

I'm having trouble following this.  If I describe a computer that includes pixelation logic and I recite "means for pixelating", that's not enough?  Note: assume pixelation is known.  What's the rationale for saying that's not enough?
Regards.

As you noted later, it is about indefiniteness.

You cannot read the means for claim and know what is being claimed. Is it the display that has the means for pixelating? Is it the software that has the means for pixelating? Is it software acting on the display that has the means for pixelating?

If the spec. points it out, then OK. But it will probably not. The spec. will probably say both possible structures can be pixelate.