112(f) interpretation in notice of allowance

Started by mbison, 01-15-17 at 02:03 AM

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mbison

I recently received a first-action allowance that includes an indication that several of our claims were interpreted under 112(f).  The application is for a software invention, and our 3 independent claims were for a method, a system, and a CRM.  The system claims were interpreted under 112(f) apparently because we recited "a control system configured to:" and then listed several software functions.  The examiner indicated that the specification has corresponding structure for the control system that includes a processor and non-transitory CRM. 

I'm wondering what if anything we should do to respond to this.  Should I care in this case, given that a processor and CRM would seem to be a necessary part of any control system as claimed.  If we say nothing now, can we later argue that 112(f) should not be applied to this claim?   I think this client will be reluctant to make any substantive arguments on this issue, but I could perhaps file comments on the reasons for allowance just stating that we agree with the examiner that the claims are allowable and don't otherwise acquiesce in the examiner's statements.  Thoughts?

cheesepep

Seems to be the case. Invoking 112(f) is not a rejection. You can, if you want, say you disagree in your response for prosecution history, but that is about all you can do.



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