On February 9, 2011, the USPTO issued "Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112" and "Supplemental Information for Examining Computer-Implemented Functional Claim Limitations." The Guidelines have immediate effect, but the USPTO will consider writen comments received by April 11, 2011.

35 USC § 112, Second Paragraph

The Guidelines relate primarily to the "definiteness" requirement of 35 USC § 112, second paragraph:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

The Guidelines also briefly touch on the requirements for dependent claims set forth in 35 USC § 112, fourth paragraph:

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

The Examination Guidelines

The Guidelines are meant to supplement current provisions in the MPEP, and in some places refer to current sections of the MPEP. The Guidelines break the examination process into three basic steps:

1. Interpreting the claims using the "broadest reasonable interpretation."

The Guidelines explain the "broadest reasonable interpretation" as follows:

[T]he words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art.

The Guidelines encourage the use of "glossaries" in patent specifications to provide the "greatest clarity."

2. Determining Whether Claim Language Is Definite

The Guidelines explain that indefiniteness is assessed with reference to "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." The Guidelines emphasize that "it is important to analyze claim terms in view of the application's specification from the perspective of those skilled in the relevant art since a particular term used in one patent or application may not have the same meaning when used in a different application."

The Guidelines focus on four likely sources of indefiniteness:

1. Functional Claim Language (reciting a feature "by what it does rather than by what it is")

According to the Guidelines, examiners should consider the following factors:

(1) Whether there is a clear cut indication of the scope of the subject matter covered by the claim;

(2) whether the language sets forth well-defined boundaries of the invention or only states a problem to be solved or a result to be obtained; and

(3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.

The Guidelines suggest the following responses to indefiniteness rejections:

(1) using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature;

(2) demonstrating that the specification provides a formula for calculating a property and supporting examples that do and do not meet the claim limitation;

(3) demonstrating that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation is met; or

(4) amending the claims to recite the particular structure that accomplishes the function.

2. Terms of Degree

According to the Guidelines, Examiners should consider the following factors:

(1) whether the specification provides some standard for measuring that degree;

(2) whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree); and

(3) whether the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree).

The Guidelines indicate that an applicant can overcome an indefiniteness rejection by submitting a declaration under 37 CFR 1.132 showing examples that meet the claim limitation and examples that do not.

3. Subjective Terms

According to the Guidelines, examiners should consider whether the specification supplies some objective standard for measuring the scope of the term, because "[c]laim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention."

The Guidelines indicate that an applicant can provide "evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure," or can amend the claims "to remove the subjective term."

4. Markush Groups

The Guidelines note that a Markush claim may encompass a large number of alternative species without being indefinite, but also state that "a Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention." In explaining this situation, the Guidelines state:

[A] Markush group that encompasses a massive number of distinct alternative species may be indefinite under § 112, ¶ 2 if one skilled in the art cannot determine the metes and bounds of the claim due to an inability to envision all of the members of the Markush group.

Markush claim also may be rejected under the judicially approved "improper Markush grouping" if:

(1) the species of the Markush group do not share a "single structural similarity" or

(2) the species do not share a common use (taught or known to be functionally equivalent)

(The Guidelines also discuss claims falling under § 112, ¶ 6, including claims with computer-implemented means-plus-function limitations.)

3. Resolving Indefinite Claim Language

The Guidelines urge examiners to establish a clear record on claim meaning. When an indefiniteness rejection is withdrawn, examiners should "provide an explanation as to what prompted the change in the examiner's position," such as by pointing to the applicant's explanation. The Guidelines also encourage examiners to provide claim interpretations in the Reasons for Allowance if the meaning applied might otherwise be unclear.

Examination Procedures

According to the Guidelines:

It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. Therefore, claims that do not meet this standard must be rejected under § 112, ¶2 as indefinite.

In response to such a rejection, the applicant has the option of (i) "explaining why the language is definite" or (ii) amending the claim. As noted above, the Guidelines indicate that the prosecution history should provide a "clear" record of the claim boundaries.

The Guidelines also include some comments relating to compact prosecution. These Guidelines encourage examimers to provide interpretations for indefinite claims and then apply prior art as warranted, to avoid piecemeal prosecution. Notably, the Guidelines encourage examiners to reach out to applicants when indefiniteness is the only issue, so that it might be resolved through an interview without a written rejection.

Indefintely Definite Or Definitely Indefinite?

It is hard to quibble with the principles set forth in the Guidelines, but they seem to overlook the fact that reasonable minds can differ over the meaning of any word. For example, this statement in the Guidelines seems to reflect an impossible standard:

The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise.

I don't know if i's possible to define a word with 100% clarity, and it should not be necessary to do so in order to obtain a patent.

I am glad to see the discussion of the "broadest reasonable interpretation" standard, and wonder if it goes far enough. I have encountered interpretations that, while broad, certainly were not reasonable, especially when viewed in light of the specification and/or from the perspective of the skilled artisan. I hope examiners are encouraged by these Guidelines to give weight to the context provided by the specification when arriving at their "broadest reasonable interpretations," rather than interpreting claims in a vacuum.

I also agree with the value of interviews in resolving indefiniteness issues—or even discovering that they exist. I have participated in interviews where we thought that the examiner did not understand the invention (or the cited art), but actually was applying a claim interpretation that was broader than we had realized. In such cases, it usually is possible to advance prosecution with explanations, straight-forward claim amendments and/or evidence of how the claim would be understood by the skilled person.

On the particulars, I am most concerned by the discussion of functional claim language. The Guidelines seem to reflect a real bias against functional language. I worry that examiners will focus on the fourth option in the outline, and require applicants to recite a particular structure that accomplishes the recited function, even if the specification provides a strong basis for using broader, functional claim langauge.

As noted above, these Guidelines are effective immediately. Although the USPTO will consider written comments received by April 11, 2011, the Guidelines expressly deny any obligation to respond to public comments.