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[bakhus]

I am trying to understand the structural vs. means plus function. I don't understand so much what structural is. Is it writing only structures and connections between the structures, without any reference to the actions that the structures perform? Like for example, a processor connected to a memory module enclosed in a rigid box? Such a structural claims seem to me good only if the structure is novel, but most of the times, I think, the structure will not be itself unique, so what good are structural claims?

I read about means plus function claims, and 35 U.S.C. 112 Specification states "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." But how can a function be described without acts? Say, 'means for closing a door', isn't 'closing a door' an act? isn't a 'door' a structure?

Also, I read about the doctrine of equivalents, and searched a bit about it, and see that people recommend writing in structural form in order to benefit from the doctrine of equivalents, and I read some articles mentioning cases in the subject, and each trial ends with a different conclusion in this regard. I don't understand why structural claims equivalents, and equivalents to means for function "described in the specification" should have different equivalents scope.

Is there a difference in this regard between the USA and other countries?

[JimIvey]

But how can a function be described without acts? Say, 'means for closing a door', isn't 'closing a door' an act? isn't a 'door' a structure?

Neither "door" nor "closing" describes directly the "means."  What is the structure of the "means" in the phrase?  None is specified.  What action does the "means" take to result in closing of the door?  None is specified.  The closing of the door is merely the end result of the "means".

Also, I read about the doctrine of equivalents, and searched a bit about it, and see that people recommend writing in structural form in order to benefit from the doctrine of equivalents, and I read some articles mentioning cases in the subject, and each trial ends with a different conclusion in this regard. I don't understand why structural claims equivalents, and equivalents to means for function "described in the specification" should have different equivalents scope.

Nor do I.  However, that's the way it is.

Is there a difference in this regard between the USA and other countries?

Yes.  Section 112, paragraph 6, is a US law.  I'm not aware of any analog in any other jurisdiction, but there could be some out there.  It was a response by Congress to a court case in which "means for" doing something was interpreted literally, i.e., extremely broadly.  In theory, a cell phone could be a "means for closing a door" as one could call the telephone number of someone believed to be in the proximity of a particular door and ask that person to close the door.

Regards.

[bakhus]

Neither "door" nor "closing" describes directly the "means."  What is the structure of the "means" in the phrase?  None is specified.  What action does the "means" take to result in closing of the door?  None is specified.  The closing of the door is merely the end result of the "means".

I understand.

Also, I read about the doctrine of equivalents, and searched a bit about it, and see that people recommend writing in structural form in order to benefit from the doctrine of equivalents, and I read some articles mentioning cases in the subject, and each trial ends with a different conclusion in this regard. I don't understand why structural claims equivalents, and equivalents to means for function "described in the specification" should have different equivalents scope.

Nor do I.  However, that's the way it is.

I think some things can't be written structurally. Is there a way to write in 'means plus function' and still cover all equivalents?

Is there a difference in this regard between the USA and other countries?

Yes.  Section 112, paragraph 6, is a US law.  I'm not aware of any analog in any other jurisdiction, but there could be some out there.  It was a response by Congress to a court case in which "means for" doing something was interpreted literally, i.e., extremely broadly.  In theory, a cell phone could be a "means for closing a door" as one could call the telephone number of someone believed to be in the proximity of a particular door and ask that person to close the door.

Regards.

That is interesting. I guess that the cell phone could be interpreted as means for closing the door, in that sense, but what is wrong with that? I understand that if the claim would claim a cell phone then it is prior art, but if the cell phone is just a component of an invention, and the invention is not prior art, then why should it matter if the means are an engine connected to a control unit, as would probably be described in the specification, or a cell phone calling a janitor, right? I think that for the inventive concept it may not matter, and if someone would later find ways to replace components of the invention with others, then he may get a patent for the improvement, but I don't think that such a product should be considered not infringing the original invention, just because of a substitution of a component.

 However, I see that the way I find it logical to interpret is not always the way the courts use: I saw this case http://patentlaw.typepad.com/patent/2004/09/doctrine_of_equ.html, which is very confusing, where an on/off switch was replaced with a momentary switch by an infringer, and the infringer prevailed on the ground that the on/off switch described in the spec wasn't equivalent to a momentary switch. In the claims the switch were described as "c. plurality of entry control means, ", which covers momentary switches. The judge wrote something like, that the momentary switch existed at the time of the invention, so if they weren't included then they are not protected. This seem like it is expected from the inventor to include every possible alternative component, if the means plus function form is used. So, an inventive infringer can inventively craft an alternative component, that wasn't described in the specification, and get away with infringing the device, and the inventor on the other hand need to research every alternative to every component used by his device. This doesn't make sense, since the point in the invention is the device not the component. But this is just one case, and I believe I saw cases that had opposite outcomes too.  Is it just a game of chance? or is there a way to write good functional claims for device components?

[JimIvey]

I think some things can't be written structurally. Is there a way to write in 'means plus function' and still cover all equivalents?

Not really.  If you want a wider range of equivalents, don't use 112p6 language.

Is it just a game of chance? or is there a way to write good functional claims for device components?

Yes, well not just a game of chance.  And, yes.

"a device that is operatively coupled to the door and that is configured to close the door when ...."

There is some sound case law that says that using language other than "means for ______ing" is a clear intention of the applicant to avoid invocation of Section 112, paragraph 6.  So, "means for closing the door" can be replaced with "an article for closing the door", "an article that can close the door", and I think there is some authority that "door closing means" is actually not the same as "means for closing the door".  And, you can replace article with "device", "structure", "door closing element", etc.

Regards.

[khazzah]

I am trying to understand the structural vs. means plus function. I don't understand so much what structural is.

Structure is *what you leave out* of a Means-Plus-Function element. That is, the hallmark of a MPF element is not enough structure.

For example, this claim has 3 structural elements:

An apparatus comprising: a first piece of plywood; a second piece of plywood; and a nail driven through the first and the second piece of plywood.

Now I'm going to replace the structural nail with an element that lacks structure:

An apparatus comprising: a first piece of plywood; a second piece of plywood; and a means for fastening the first and the second piece of plywood.

If my spec includes the statement

Plywood piece 120 is fastened to plywood piece 140 by nail 150.

Then the scope of the "means for fastening" element is a nail and equivalents thereof.

If my spec includes the statement:

Plywood piece 120 is fastened to plywood piece 140 by nail 150 or screw 180.

Then the scope of the "means for fastening" element is a nail (and equivalents thereof) and a screw (and equivalents thereof).

I like to think of MPF as accomplishing text replacement: "means for fastening first and the second piece of plywood" ==> "screw OR nail fastening first and second piece of plywood".

Note that if my spec does not include any statement at all about how the pieces are fastened, the claim is indefinite.

[khazzah]

is there a way to write good functional claims for device components?

Use generic nouns. Use "fastener" rather than means for fastening. MPF seems most appropriate when there is no generic noun that covers your function.

IMHO, MPF is very misunderstood.

[bakhus]

What is the difference between the equivalents of nail in:

An apparatus comprising: a first piece of plywood; a second piece of plywood; and a nail driven through the first and the second piece of plywood.

and the equivalent of means in a claim such as:

An apparatus comprising: a first piece of plywood; a second piece of plywood; and a means for fastening the first and the second piece of plywood.

where the appropriate means in the specification is only the following nail including statement:

Plywood piece 120 is fastened to plywood piece 140 by nail 150.

Are both going to be just equivalents of a nail? If so, then what is the advantage of not using MPF?

Could the scope of the MPF be made broader by including in the specification itself an MPF like statements, such as: The device has an element that can perform the following: description of the job of the element? Or would that be indefinite too? What if there are a few structural examples in addition to the MPF like statement?

Use generic nouns. Use "fastener" rather than means for fastening. MPF seems most appropriate when there is no generic noun that covers your function.

OK. But does "fastener" have to be defined first in the specification? If so, wouldn't the definition limit its scope? If not so, why is fastener definite, and "means for fastening" not definite?

If there isn't a generic noun, what can be done in order to not be limited by the structures described in the specification? (I read in several places that avoiding the magic word "means for" is not enough)

[JimIvey]

What is the difference between the equivalents of nail in....

The difference lies in the specification.  Remember, you are required to describe the "best mode" contemplated by the inventor(s) for practicing the invention.  So, the specification, in meeting this "best mode", might specify that certain nails of a certain size and type and material might be used.  "In one embodiment, the first and second pieces of plywood are fastened by a nail, such as a galvanized 2.5-inch, wide-head nail, preferably hammered into place manually."

One claim says "nail."

The other claim says, in effect, "a galvanized 2.5-inch, wide-head nail hammered into place manually and some nearly non-existent range of equivalents thereof."

Regards.

[khazzah]

What is the difference between the equivalents of nail in....

The difference lies in the specification.  Remember, you are required to describe the "best mode" contemplated by the inventor(s) for practicing the invention. 

Interesting. So while the spec must *include* the best mode for all types of claims -- MPF and non-MPF -- you're saying that the best mode details are automatically ... hmm, let's say "imported into" ... the MPF claims, thus narrowing scope. Simply because of the way a MPF element in a claim interacts with the spec.

Where those same details do not get imported into the non-MPF element "nail", thus affording a broader scope.

Did I capture this accurately?

[Isaac]

Best mode is a red herring here. 

For means plus function (mpf) claim elements, the structure for implementing the means must be explicitly described in the spec and clearly linked to the claimed function.  However the claimed mpf element does not need to include the best mode.  In fact the inventor may not even know of a best mode.

[IntelProp007]

MPF elements are useful for frustrating your opponent in litigation, especially concerning issues of doctrine of equivalents, where the case law is rather convoluted and inconsistent.

[bakhus]

Would inclusion of a statement such as the following help to widen the scope of MPF?

"I claim the following claims, wherein means plus function claim elements cover all equivalent means for performing the function, whether said means, or their equivalents, are specified in the specification, or not, and wherein the means described in said specification do not limit the means usable for performance of said function, and wherein the specification act as an example of performing the stated function, and wherein functions  equivalent to the stated function for the purpose of the function of the device, are claimed implicitly."

[Isaac]

Would inclusion of a statement such as the following help to widen the scope of MPF?

...wherein the means described in said specification do not limit the means usable for performance of said function, and wherein the specification act as an example of performing the stated function, and wherein functions  equivalent to the stated function for the purpose of the function of the device, are claimed implicitly."

If your claims invoke 35 USC 112, sixth paragraph and the structural means are not described in the spec, the claims are invalid.  The better approach here would be to not use mpf form.

[Blutarsky]

MPF elements are useful for frustrating your opponent in litigation, especially concerning issues of doctrine of equivalents, where the case law is rather convoluted and inconsistent.

I would agree.  Additionally, MPF elements provide the attorney with explicit, statutorily protected equivalents (provided they are adequately described in the spec).  After Festo, the only way to protect equivalents for elements that may be amended during prosecution is to utilize MPF elements which retain their equivalents, unlike amended structural limitations.

[khazzah]

Would inclusion of a statement such as the following help to widen the scope of MPF?

"I claim the following claims, wherein means plus function claim elements cover all equivalent means for performing the function ...

The plain language of the statute (112P6) already gives you equivalent structures, so this portion of your statement would have no effect.

whether said means, or their equivalents, are specified in the specification, or not,
wherein the means described in said specification do not limit the means usable for performance of said function,

These portions of your statement clearly contradict well-established case law for 112P6, and so would have no effect.

and wherein the specification act as an example of performing the stated function, and wherein functions  equivalent to the stated function for the purpose of the function of the device, are claimed implicitly."

These portions of your statement clearly contradict well-established case law for 112P6, and so would have no effect. Case law says that you don't get *equivalent* functions, and instead the function must be *identical*.