Means Plus Function- Invokes indefiniteness ?

Essentially, means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within the body of the claim itself.

A claim term is functional when it recites a feature by what it does rather than by what it is. There is nothing intrinsically wrong with the use of such claim language, although it is becoming more and more apparent (if it wasn’t already apparent enough) that the Federal Circuit frowns upon means plus function claiming.

Nevertheless, 35 U.S.C. § 112(f)[*] expressly authorizes a form of functional claiming (means plus function claiming).  The statute says:

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.

In a split opinion, the Federal Circuit has affirmed a lower court ruling that Ergo’s asserted claims are invalid. Judge Moore explains in her opinion, that the claims are indefinite under 35 U.S.C. § 112 (2) because the means-plus-function limitations are not supported by any corresponding structure disclosed in the specification. 

Should you avoid means plus function claims?  While many will advice yes, the best answer is more nuanced.

Means plus function claiming is an excellent way to make sure that you have captured within the claims all of the various means disclosed in the application.  Claiming all the possible permutations can be extremely costly, so using a couple of means-plus-function claims in an attempt to have the claim scope as broad as the disclosure can be a very good strategy.  Means plus function claims cannot, however, be the primary claims and for goodness sakes don’t file patent applications with only means-plus-function claims.  Means-plus-function should be used like seasoning — a very powerful garlic!  A little may be OK but too much is a very poor choice.

Of course, it is critical to also understand that the rules for means plus function claiming apply very differently with respect to software and computer implemented inventions. SeeThe Algorithm Cases.

Best practices in terms of writing a disclosure will have you write your disclosure to satisfy the disclosure requirements in these Algorithm cases even if you don’t employ means-plus-function claiming initially. With that in mind, it will be critical understand with as much comprehensive detail as possible the programming, hardware and processes associated with the delivery, acceptance and manipulation of information. You will want to have as much information as possible about algorithms/routines used to carry out each part of the process.

This type of detailed information will be critical because with inventions of this type the nuances of how the system/method programmatically provides the functionality from a technical level is where the patentability resides, and also what will be required to make sure that the recited invention in the claims is real, concrete, tangible and, therefore, not merely an abstract idea. You will want to overwhelm the reader with technical details, the kind you would include in a thesis or development document. Being able to provide illustrative examples, while not required, will be quite helpful in that it will again work to show that the innovation disclosed is not merely abstract, but does exist.

Disclosures should always include multiple flowcharts, schematic diagrams and illustrative examples that highlight the core uniqueness and functionality to the greatest extent possible. In essence, you want the technical disclosure to be so comprehensive that no Federal Judge could ever hope to understand the technology at play. If they understand what you write from a technical standpoint you run the real risk that the claims will either be patent ineligible or obvious. Of course, you do need to make sure they can identify the presence of the algorithms.

So how do you know when you will get hit with the peculiar disclosure requirements invoked when you rely upon § 112(f)* ?  

If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes § 112(f). The claim limitation is presumed to invoke § 112(f) when it explicitly uses the phrase “means for” or “step for” and includes functional language. That presumption is overcome when the limitation further includes the structure necessary to perform the recited function.

Determining whether a claim limitation properly invokes means plus function treatment cannot merely focus on the presence or absence of the word “means.” Focus must be appropriately placed on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

So what should you do?

File the most complete disclosure you possibly can at the earliest date possible. Describe things generally and build to ever more specific embodiments and alternative descriptions, explaining all the variations and possibilities with as much detail as you possibly can. This is the winning approach even if you do not use means plus function claims, but it is absolutely essential if you are going to use means plus function claims. Of course, remember that high quality patent drawings that show structures can be a highly effective way to avoid indefiniteness rejections.

Read More on means plus function case laws

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*  35 U.S.C. 112(f),  under the America Invents Act (AIA). Prior to  AIA was 35 U.S.C. 112,  After, the AIA became 35 U.S.C. 112(f).

Articles cited from:

http://www.ipwatchdog.com

https://patentlyo.com