On February 9, 2011, the U.S. Patent and Trademark Office (USPTO) issued guidelines, effective immediately, to assist examiners when examining patent applications for compliance with 35 U.S.C. §112, ¶2, and when examining patent applications containing functional language (under 35 U.S.C. §112, ¶6) and for claims relating to “computer implemented inventions.” 76 Fed. Reg. 7162.

35 U.S.C §112, ¶2, requires that patent claims particularly point out and distinctly claim the subject matter that the applicant regards as his or her invention. The guidelines recognize that broad does not mean indefinite where the metes and bounds of a claim are clear. However, examiners must give claimed subject matter its broadest reasonable interpretation consistent with the specification. Based on the broadest reasonable interpretation, the examiner must determine whether read in light of the specification those skilled in the art would understand what is claimed.

The guidelines set forth several types of terms in which questions of claim definiteness commonly arise, such as functional claim language, terms of degree, subjective terms and Markush groups.

A determination of “definiteness” in the context of functional claim language is highly dependent on context. Examiners are instructed to consider several factors: whether there is a clear-cut indication of the scope of the subject matter covered by the claim, whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained and whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.

Using various Federal Circuit and CCPA (Court of Customs and Appeals) decisions as guideposts, the guidelines offer examples. In one case, the term “fragile” was found to be indefinite because the specification in that case was ambiguous as to the requisite degree of the fragileness of the claimed item. Referring to another case, the guidelines explain that the term “essentially free of alkali metal” was definite, because in the case example provided, the specification provided a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether the claimed process was ‘essentially free of alkali metal.’

Regarding definiteness of terms of degree, examiners are instructed to determine whether the specification provides some standard for measuring the degree. A claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement.

Subjective terms, i.e., terms that requires the exercise of subjective judgment, in a manner similar to terms of degree, are not indefinite if the specification supplies some standard for measuring their scope. In the U.S. Court of Appeals for the Federal Circuit case used as an example, the Court decided the term “a computer interface screen with an aesthetically pleasing look and feel” was indefinite, because nothing in the specification provided any guidance as to what design choices would result in an aesthetically pleasing look and feel.

The guidelines explain that a Markush group type claim is indefinite if the species of the Markush group do not share a “single structural similarity,” or the species do not share a common use.

The guidelines also provide standards for determining when a §112, ¶6 (means-plus-function) claim element passes master under §112, ¶2. When examining a means-plus-function claim element, a rejection under §112, ¶2 is appropriate when it is unclear whether a claim limitation invokes §112, ¶6; when §112, ¶6 is invoked and there is no disclosure or there is insufficient disclosure of structure, material or acts for performing the claimed function; and/or when §112, ¶6 is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material or acts to the claimed function.

The guidelines include specific discussion of computer-implemented means-plus-function limitations. For a computer-implemented invention having a means-plus-function claim element, in order to be supported by adequate disclosure of corresponding structure, the specification must sufficiently disclose an algorithm to transform a general-purpose microprocessor to a special-purpose computer so that a person of ordinary skill in the art can implement the disclosed algorithm to achieve the claimed function. A rejection under §112, ¶2 is appropriate if the specification fails to disclose any corresponding algorithm associated with a computer or microprocessor. Merely referencing a specialized computer (e.g., a bank computer), some undefined component of a computer system (e.g., an access control manager), logic, code or elements that are essentially a black box designed to perform the recited function, is not sufficient absent some explanation of how the computer or the computer component performs the claimed function.

Practice Note: Practitioners should try to avoid use of subjective terms or terms of degree. When such terms are used, practitioners should provide examples or teachings in the specification to give clear scope, standard or meaning of the terms. When claiming computer-implemented inventors, the specification should sufficiently disclose hardware and algorithm to perform the computer-implemented inventions such that one of ordinary skill in the art would know how to program a disclosed computer to perform claimed functions.