Accepting 112 interpretation

Started by fb, 05-04-18 at 08:23 AM

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fb

OA has this 112 interpretation:

"This application includes one or more claim limitations that do not use the word "means," but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:

·   positioning device and attachment mechanism in claim 1
·   coupler in claim 2

"Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof."

I don't see anything wrong with accepting this interpretation, since structure examples for the device, mechanism, and coupler are in the description. Should I just reply that I accept it?

MYK

You've been around on this forum for so long that I sort of assumed you were a practitioner.  Going back to the start of your post history here, you were a marketing guy;  is that still the case?  Did you write your application for this patent pro se?

Means-plus-function is interpreted in a highly restrictive manner.  Depends on whether you want to be narrowly limited to only the disclosed embodiments and nothing more.  Generally speaking, the only time that that would be acceptable is if there is absolutely no other way to accomplish the task.  Even then, it's a bad idea because you might not have thought of something.

Take Shufflemaster for example.  They used "means plus function" claiming (112(f), the thing that the examiner is trying to shoehorn you into) for their patent on automated shuffling machines using little robot arms and sliders.  Eventually, someone else realized that it was possible to use a hairdryer to blow cards around instead of using physical manipulators.  Good-bye monopoly and good-bye ridiculous profit margins.

In your case, these sound like physical chunks of something that are being used to link parts together and move them around, i.e., they are structural limitations.  You would probably be better off claiming the limitations structurally since the resulting limitation would not be limited to what you disclose in the specification and nothing more.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

PatentNugget

If you accept it, the claims will be narrowly construed to the corresponding structure disclosed in the application.  So, if you disclosed one example of the "positioning device," that is how the claim will be construed, that is, according to that example.  Whatever structure you have in that example is now how the claim is limited. 

Are you happy with that?  if yes, you can respond to the OA without mentioning it at all.

If not, amend the claims to remove the term "device" and mechanism" and add structure.  Have interview if possible to explain.  use mpep for arguments. 

fb

Still marketing, but yes it is pro-se, and is mechanical parts.

I had thought that means+function, if enough examples in description, would also cover other embodiments that are not in the description, and that was the reason for using it. Like the Shuffle, I thought that any means to move the cards would be covered. I guess not.

MYK

Nope.  The good news is, you should be able to write claims that don't get interpreted as MPF.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

lazyexaminer

A MPF limitation covers what is in the spec "and equivalents thereof." See MPEP 2183 for a start on what is an equivalent.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

RolandS

Quote from: lazyexaminer on 05-07-18 at 07:01 PM
A MPF limitation covers what is in the spec "and equivalents thereof."

This sounds like there is no difference if I claim MPF or just the structures described in the spec.

midwestengineer

Quote from: RolandS on 05-07-18 at 11:17 PM
Quote from: lazyexaminer on 05-07-18 at 07:01 PM
A MPF limitation covers what is in the spec "and equivalents thereof."

This sounds like there is no difference if I claim MPF or just the structures described in the spec.

There is a major difference.  Under MPF, the equivalents thereof are decided at the time the claim is issued.  In other words, the state of the art at that of issue.  In contrast, under the doctrine of equivalents you get those developed in the future.  For many areas, such as the computer industry, this is a huge and crucial distinction because tech moves at such a fast pace.

fb

Is a little confusing about this time-of-issue. Could an example be had, maybe using the Shuffle, to explain more?

lazyexaminer

Quote from: fb on 05-08-18 at 10:04 PM
Is a little confusing about this time-of-issue. Could an example be had, maybe using the Shuffle, to explain more?

I don't know enough about the Shuffle to make a good example.

Under the doctrine of equivalents, you can catch infringers who don't literally infringe your claim, if their thing has equivalents to whatever you claimed. Such equivalents in this context is measured at time of infringement, so your claim might cover after-arising technology, things that didn't even exist when you made your invention. A classic example is a claim including vacuum tube limitations might have been infringed by devices with transistors, as transistors were basically an equivalent, even if transistors did not exist when the vacuum tube patent was filed.

Under 112(f) equivalents, your claim covers what is in the spec + equivalents, but it is only those things that were equivalent at time of filing. If transistors did not exist when you filed, a claim to "means for switching" would only cover the vacuum tubes in your spec and things that were equivalent at that time. So if you use 112(f) you lose out if technology vastly changes.

Also, 112(f) equivalents are considered to be literally a part of the claim. Doctrine of equivalents is a separate deal that has its own issues.

Can you get a DOE equivalent on a 112(f) limitation? I believe so, at least you could as of 10-15 years ago. How does that affect this analysis? No idea, that's for someone more versed in litigation to say...
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

OhioStateJD

This is a Kobayashi Maru of patent prosecution: a no-win game in which the best choice is not to play.

You likely don't know at this juncture whether invocation or non-invocation will ultimately be more helpful to your client down the line.  Some time in the future, 112(f) invocation may be needed to avoid an invalidity attack under 101, 112(a), or prior art.  On the other hand, non-invocation may be needed in the future to avoid an attack under 112(b) or to stretch your claim(s) onto a competitor product.

My advice is either to ignore the 112(f) statement or to indicate that you will not respond to the statement substantively because it is not a rejection and a response is not required to traverse any rejection (of course, if substantive engagement on the 112(f) invocation point is required to traverse a rejection, then you obviously need to substantively engage).

If you decide, today, to go on the record with a challenge to (or acceptance of) the accuracy of a 112(f) allegation, do so knowing that you are binding the hands of anyone who might want to use the resulting patent in the future.

Robert K S

OhioStateJD's comments should be enshrined on a plaque in every practitioner's office.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

fb

Well in my current case, the device, mechanism and coupler are just standard items to connect other parts which are the actual invention, so if a new type of device, mechanism or coupler comes about, it would not affect the invention.

I have heard that MPF is best used sparingly, and mainly for inventions that have or need a lot of embodiments but only a few claims; this way all the embodiments can be compacted into a small claim space. I have three MPF claims that need attention, so maybe leaving one as is, and converting the other two to structure, is best.

And I guess this amendment can be done while also stating that no admission is being made of 112(f) status.

useful_machine

Consider that it is well established that the absence of "means for" or "step for" language creates a strong rebuttable presumption that a limitation is not properly interpreted as invoking a means-plus-function limitation under § 112(f).  Also, EnOcean v. Face Int'l. (Fed. Cir. 2014) stated that a claim term that conveys sufficient structure to a person having ordinary skill in the art should be seen as a sufficient limitation rather than one governed by 35 U.S.C. § 112, sixth paragraph. 

You could submit that the positioning device, attachment mechanism, and coupler convey some level of structure to one of skill in the art such that the skilled worker would have been familiar with the design and principles of the types of components utilized in the claimed invention and the terms are not so functional as to invoke 112(f), therefore, there are no § 112(f) issues to address. 

Not sure if this response would invoke the Kobayashi Maru consequences that OhioStateJD mentioned.

Also, if those alleged 112(f) limitations are not required for patentability, could you amend the claims to recite element A positioned relative to element B (instead of including a positioning device for positioning A relative to B); element C attached to element B (instead of including an attachment mechanism for attaching C to B; etc.?

snapshot

Quote from: useful_machine on 05-09-18 at 06:28 PM
Consider that it is well established that the absence of "means for" or "step for" language creates a strong rebuttable presumption that a limitation is not properly interpreted as invoking a means-plus-function limitation under § 112(f). 

Williamson changed the 112f standards - it's not a "strong" rebuttable presumption anymore.



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