2019 Guidance Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112
By Ellen Smith and Derek Kim
On January 4, 2019, the United States Patent and Trademark Office (“USPTO”) issued examiner guidance for examining definiteness of functional claim limitations under 35 U.S.C. § 112. Although the new guidance does not have the force of law, it is important to have a comprehensive understanding of this guidance because it will affect how claims will be examined under § 112.
In short, the patent examination process under § 112 ensures that the claims of an application have proper written description and enablement support under § 112(a) in the disclosure of the application, and that functional limitations (i.e., claim limitations that define an element in terms of the function it performs without reciting the structure, materials, or acts that perform the function) are properly treated as means (or steps) plus function limitations under § 112(f) and sufficiently definite under § 112(b).
The guidance focusses on software patents because courts have recognized a problem with broad functional claiming without adequate structural support in the specification. The USPTO guidance proposes to address this recognized problem in which the Federal Circuit stated that “[s]oftware patents typically…describe, in intentionally vague and broad language, a particular goal or objective [of the software].”
35 U.S.C. § 112(f)
In Williamson v. Citrix Online, LLC, the Federal Circuit recognized that some of its prior opinions established a heightened bar to overcome the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112(f).  The court concluded that such a heightened burden is unjustified and held that “[t]he standard is 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.”
Specifically, instead of using the term “means” (or “steps”), a substitute term can act as a generic placeholder for the term “means” where that term would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. In other words, when a claim term does not recite “means” (or “steps”), the presumption that § 112(f) does not apply can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. For example, terms such as “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for” may invoke § 112(f) claim interpretation.
With respect to § 112(f), examiners will apply § 112(f) to a claim limitation to determine if it meets the 3-prong analysis set forth in the Manual of Patent Examining Procedure (“MPEP”). The 3-prong analysis includes evaluating whether (1) the claim limitation uses the term “means” (or “step”) or a generic placeholder, (2) the term is modified by functional language, and (3) the term is modified by sufficient structure, material or acts for performing the function.
In addition, in order to determine whether a word, term, or phrase coupled with a function denotes structure, the new guidance tells examiners to check whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art-recognized structure to perform the claimed function.
35 U.S.C. § 112(b)
The guidance provides that for a computer-implemented claim limitation under § 112(f), the specification must disclose an algorithm for performing the claimed specific computer function, or the claim is indefinite under § 112(b). In support, the guidance provides that in Noah Sys., Inc. v. Intuit Inc., the Federal Circuit has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. In other words, special purpose computer-implemented § 112(f) claim limitations will be indefinite under § 112(b) when the specification fails to disclose an algorithm to perform the claimed function.
Notably, the guidance warns that the requirement for the disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software to convert a general purpose computer to a special purpose computer to perform the claimed function. For example, the Federal Circuit disagreed that “a microprocessor can serve as sufficient structure for a software function if a person of ordinary skill in the art could implement the software function,” and held that “a person of ordinary skill in the art plays no role in determining whether an algorithm must be disclosed as structure for a functional claim element.”
The guidance also warns that the disclosed algorithm must be able to perform all of the claimed functions. For example, when the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the specification is treated as if it disclosed no algorithm.
Lastly, the guidance provides that a computer-implemented functional claim may also be indefinite when the 3-prong analysis for determining whether the claim limitation should be interpreted under § 112(f) is inconclusive because of ambiguous words in the claim.
35 U.S.C. § 112(a)
With respect to the written description requirement under § 112(a), the guidance explains disclosure requirements for computer-implemented inventions claimed in terms of their functionality. The guidance provides that “[f]or computer-implemented functional claims, the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software […] due to the interrelationship and interdependence of computer hardware and software.” More specifically, it provides that “[w]hen examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.”
In Vasudevan Software, Inc. v. MicroStrategy Inc., the Federal Circuit evaluated “whether the specification shows possession by the inventor of how accessing disparate databases is achieved.” Here, the Federal Circuit found that expert testimony raised “a genuine issue of material fact on whether the specification shows how to achieve the functionality of accessing disparate databases.” The guidance explains that the Federal Circuit concluded that there was a genuine issue of material fact as to whether the inventor had possession of an invention that achieved the claimed result based on the expert testimony that “specific portions of the specification explain ‘that serialized files can be used to correlate parameters from two databases,’ and that ‘those correlation parameters can be used to identify data in one database that is correlated to data in another.’”
With respect to enablement requirement under § 112(a), the guidance points out that “[n]ot everything necessary to practice the invention need to be disclosed.” The guidance notes that this is of particular importance with respect to the computer-implemented inventions due to the high level of skill in the art and the similarly high level of predictability in generating programs to achieve an intended result without undue experiment. Thereafter, it warns that “applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art.”
In view of the recent guidance, patent applications directed to computer-implemented inventions will receive heightened scrutiny under 35 U.S.C. § 112 during examination. We will assess how much impact this new 112 guidance will bring with respect to the allowance rate of software patents in the upcoming months. Meanwhile, applicants are advised to be particularly mindful when drafting patent applications directed to computer-implemented inventions, in order to ensure the inclusion of sufficient structural elements in the specification that carry out the functional limitations, and described with enough detail to show that the inventor had possession of how the functional limitation is achieved at the time of filing.
 See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J., concurring).
 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
 See id.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 5 (citing Williamson, 792 F.3d at 1349).
 See, e.g., MPEP §2181, subsection I.A.
 MPEP (9th ed. Rev. 08. 2017, Jan. 2018).
 See MPEP §2181, subsection I.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 10 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
 See Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
 See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015); See also In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)(stating “when the disclosed structure is a computer programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.”)
 See id.
 See Noah Sys., Inc. at 1319.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 18.
 See id.
 See Vasudevan Software Inc. v. MicroStrategy Inc., 782 F.3d 671, 683 (Fed. Cir. 2015).
 See id.
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 19 (citing Vasudevan, at 683).
 See 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 at page 21 (citing Trs. of Bos. Univ. v. Everlight Elecs. Co., LTD., 896 F.3d 1357, 1364 (Fed. Cir. 2018)(explaining that while “the specification must enable the full scope of the claimed invention[,]” “[t]his is not to say that the specification must expressly spell out every possible iteration of every claim.”).
 See id.
 See id; See also MPEP § 2161.01, subsection III, and MPEP § 2164.08.