Patent claims need to be definite. The Patent Office recently issued guidelines to its examiners on how to apply the definiteness requirement. (76 Fed. Reg. 7162) (http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf) According to these guidelines:
A. The claims are to be given their broadest reasonable interpretation. The words of the claim are given their plain meaning, unless such meaning is inconsistent with the specification.
B. If the claim can be read with more than one reasonable interpretation, a rejection for indefiniteness is appropriate. If the boundaries of the protected subject matter are not clear, the claim is indefinite.
C. A broad claim is not indefinite merely because it encompasses a wide scope of subject matter.
D. Functional language can be suspect. The primary inquiry is whether the language leaves room for ambiguity. The following factors are to be considered when examining functional language for indefiniteness:
(i) Is there a clear cut indication of the claim scope;
(ii) Does the claim set forth well-defined boundaries of the invention or does it only state a problem solved or result obtained; and
(iii) Can one skilled in the art know what structure or steps are encompassed by the claims?
E. When terms of degree are used, does the specification provide a standard for measuring that degree?
F. If a subjective term is used, does the specification provide some standard for measuring the scope of the term?
G. With regard to Markush claims, can one skilled in the art envision all of the members of the Markush group, and does the claim contain an improper grouping of species?
H. Examiners will apply 35 U.S.C. Section 112, paragraph 6 to a claim limitation that:
(i) Uses the phrase “means for” or “step for” or a non-structural term that does not have a structural modifier;
(ii) The phrase is modified by functional language; and
(iii) The phrase is not modified by sufficient structure, material, or acts for achieving the specified function.
I. If it is unclear if the claim invokes 35 U.S.C. Section 112, paragraph 6, a rejection for indefiniteness may be appropriate.
J. If the claim invokes 35 U.S.C. Section 112, paragraph 6, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function.
K. For computer implemented means-plus-function limitations, the corresponding structure is not a general purpose computer, but rather must be a special purpose computer programmed to perform the disclosed algorithm.
These guidelines and supplemental examination information are effective February 9, 2011 and apply to all applications filed before, on or after the effective date.
The USPTO is inviting comments on these guidelines and supplemental examination information. To be ensured of consideration, written comments must be received on or before April 11, 2011. No public hearing will be held. Comments concerning these guidelines and supplemental examination information may be sent by electronic mail message over the Internet addressed to SEGuidelines112@uspto.gov
