Functional Language in Claims
David O’Dell
Haynes and Boone LLP
David.ODell@haynesboone.com
867-8510
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Agenda
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Claim Preambles
Means plus function
Product by process
Software/circuit functionality
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Preamble
• Does it limit the claim?
– Case by case determination (MPEP 2111.02)
• When is it a limitation?
– When it is “necessary to give life, meaning, and
vitality” to a claim
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Is the Preamble a Limitation?
• Limits the structure of the claim – yes
– Any terminology in the preamble that limits the structure of
the claimed invention must be treated as a claim limitation.
– Elements in the preamble appear in the body of the claim.
• Purpose or intended use – no
– If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely
states, for example, the purpose or intended use of the
invention, rather than any distinct definition of any of the
claimed invention's limitations, then the preamble is not
considered a limitation and is of no significance to claim
construction
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Preamble
• Examples:
– “A surgical drill comprising:”
• Does the claim recite any structure or operation
directed to surgery?
• Or, does the claim only recite a motor and
chuck?
– “For use in cellular communications, a
device for connecting two components,
comprising:”
• Does claim body recite cellular-based
structure?
• Or, is this a mechanical connector?
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Preamble
• However
– Functional language in a claim preamble
can help to get your application into a
proper art unit
• But, KSR allows examiners to consider art in
different fields of endeavor
– Also, a new use for an old device may be
patentable
• Must rebut prima facie obviousness
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Preambles
• Takeaways
– Consider a short preamble
• Examiners ignore them for patentability
• Infringers argue them for non-infringement
– If you cite elements in the preamble,
reference them in the body of the claim
– Some elements in the preamble may be
helpful for classification or other reasons
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Means Plus Function (MPF)
35 USC 112, para 6
• 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.
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Means Plus Function (MPF)
– What is an “equivalent”?
• performs the identical function “in substantially
the same way, with substantially the same
result.” General Protecht Group, Inc. v. ITC
(2010)
– Carrying out a function magnetically is NOT
equivalent to carrying it out mechanically as
a matter of law
• If an alternative exists at the time the patent
was filed, but it was not disclosed in the spec,
then the alternative may not be an “equivalent.”
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Means Plus Function (MPF)
• Takeaways
– Consider using non-MPF claims
– MPF claims can be helpful if your
specification has many embodiments.
• Give many examples of different structures in
the specification
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Product-by-Process
– What is a “product-by-process” claim?
• Product is defined at least in part in terms of the
method or process by which the product is made
– Example 1: a device made by the process of claim x.
– Example 2: a trench formed by a high-pressure water
excavation process
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Product-by-Process
– What is not a “product-by-process” claim?
• Intended use of a device
– Discussed previously with preambles
• A process that is actually a structural limitation.
– Example 3: an extruded layer.
• A function of a claim element.
– Example 4: a computer for calculating x.
– (This will be discussed in the following section.)
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Product-by-Process
– Do the process elements in productby-process claims serve as
limitations?
• The answer depends on the situation
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Product-by-Process
– Consider the following four cases:
• In re Thorpe, 777 F.2d 695 (Fed Cir 1985)
• Atlantic Thermoplastics v. Faytex Corp., 970
F.2d 834 (Fed Cir 1992)
• Abbot Labs v. Sandoz, 566 F.3d 1282 (Fed Cir.
2009, en banc)
• Amgen v. F. Hoffmann-La Roche, 580 F.3e
1340 (Fed Cir 2009)
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Product-by-Process
In re Thorpe (Fed Cir. 1985)
– Pertains to patent prosecution
– “The patentability of a product does not depend on
its method of production. If the product in the
product-by-process claim is the same as or
obvious from a product of the prior art, the claim is
unpatentable even though the prior product was
made by a different process.”
– Cited in current version of MPEP 2113
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Product-by-Process
Atlantic Thermoplastics (Fed Cir. 1992)
– Pertains to infringement
– “process terms in product-by-process claims serve
as limitations, in determining infringement.”
– Contradicted earlier case, Scripps Clinic &
Research Foundation v. Genentech, Inc., 927 F.2d
1565 (Fed. Cir. 1991)(“the correct reading of
product-by-process claims is that they are not
limited to product prepared by the process set
forth in the claims.”)
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Product-by-Process
Abbot Labs v. Sandoz (Fed Cir. 2009)
– Pertains to infringement
– En banc, attempts to resolve differences between
Atlantic and Scripps.
– “process terms in product-by-process claims serve
as limitations in determining infringement.” citing
Atlantic.
• Note that Judge Rader wrote both Atlantic and Abbot.
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Product-by-Process
Amgen v. F. Hoffman (Fed Cir. 2009)
– Pertains to validity before the court
– when “determining validity of a product-by-process
claim, the focus is on the product and not on the
process of making it.”
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Product-by-Process
Amgen v. F. Hoffman (Fed Cir. 2009)
– (continued)
– The Court discusses Atlantic, but appears to be
following Thorpe.
– This violates the axiom: “claims must be interpreted
and given the same meaning for purposes of both
validity and infringement analysis.” Amazon.com v.
Barnes andNoble.com, 239 F.3d 1343 (Fed. Cir.
2001)
– Note, this axiom does not apply to treating claims
differently before the PTO and the court. See, e.g.,
In re Swanson
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Are Product-by-Process Terms
Limitations?
– Patentability Before the PTO – No
(rebuttable)
• “Even though product-by-process claims are
limited by and defined by the process,
determination of patentability is based on the
product itself. If the product in the product-byprocess claim is the same as or obvious from a
product of the prior art, the claim is
unpatentable even though the prior product
was made by a different process.” MPEP 2113
• Burden to overcome rejection shifts to
patentee.
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Are Product-by-Process Terms
Limitations?
– Infringement Before the Court - Yes
• “[P]rocess terms in product-by-process claims
serve as limitations in determining
infringement.” Abbot Labs, citing Atlantic.
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Are Product-by-Process Terms
Limitations?
– Validity Before the Court - Maybe
• According to Amgen, they are not.
• However, it still seems that one can argue that
claims should be interpreted consistently for
validity and infringement
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Product-by-Process
– Summary:
• Patentability before the PTO: No
(rebuttable)
• Infringement before a court: Yes
• Validity before a court: Maybe
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Product-by-Process
– Takeaways
• Product-by-process claims seem to get the
worst of all worlds
– It is harder to obtain a patent.
– It is harder to show infringement.
– They may or may not help the patentee uphold the
validity of the claim in court
• Therefore, avoid drafting product-by-process
claims if possible
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Additional Case of Interest
Ex parte Rodriguez, (BPAI 2009)
Claim 1:
An apparatus comprising:
a system configuration generator configured to
generate a random system configuration file of a
structurally variable and complex system;
a system builder configured to (i) build a system
level netlist and (ii) generate system parameters
in response to said random system configuration
file; and …
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Ex parte Rodriguez
Claim 1 (continued)
a system verification environment configured to
verify said structurally variable and complex
system in response to said system level netlist,
wherein said simulation verification environment is
configured to provide automatic random
verification of said structurally variable and
complex system in response to said random
system configuration file.
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Ex parte Rodriguez
Board ruled:
All claim elements were means plus
function.
(e.g., “a system configuration generator
configured to generate a random system
configuration file of a structurally variable and
complex system”)
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Ex parte Rodriguez
The means plus function claim
elements were rejected because there
was no structure (algorithm) in the
specification (indefinite and nonenabling)
• Spec had a high-level flow chart, but did
not list any source code
• Spec stated a POSA would know
“appropriate programming” to implement
the invention.
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Ex parte Rodriguez
BPAI stated: “In particular, the
specification does not disclose any
specific algorithm that could be
implemented on a general purpose
computer to provide [the claimed
function].”
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Ex parte Rodriguez
BPAI further stated:
• “[F]unctional limitations must be
commensurate with the scope of the
supporting disclosure.”
• “As such, the specification may not
enable the full scope of the functional
language of the claim without undue
experimentation.”
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Ex parte Rodriguez
Takeaways:
– In software/circuit patents, be careful
to support the claim functions in spec
• software algorithms
• flow charts or source code
• circuit diagrams
– Be careful for unintended MPF
claims.
– Understand that functional language
can be very broad.
© 2011 Haynes and Boone, LLP
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Thank you
David O’Dell
Haynes and Boone LLP
David.ODell@haynesboone.com
867-8510
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©2011 Haynes and Boone, LLP