By Jason Rantanen
Inventio AG v. ThyssenKrupp Elevator Americas Corporation (Fed. Cir. 2011) Download 10-1525
Panel: Lourie (author), Prost, Moore
Patent claims may be indefinite due to their use of functional language untethered to any structure. Prevailing on such an argument, however, can be quite difficult, as Inventio v. ThyssenKrupp illustrates.
The patents in this case relate to a device that allows elevator passengers to enter their floor destination as they call for the elevator. Central to the claimed invention are two components: a "computing unit," which processes the passenger's input, and a "modernizing device," which acts as an intermediary between the computing unit and the elevator control. During claim construction, the district court concluded that both claim terms "lacked sufficient structure to avoid § 112 ¶ 6," slip op. at 7, further holding that they were indefinite because the written description failed to disclose corresponding structure to perform the recited functions. Inventio appealed.
Strong Presumption Against Means Plus Function Construction
Patentees are permitted to include purely functional language in their claims under § 112 ¶ 6. Under that provision, such limitations "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Slip Op. at 9. Whether § 112 ¶ 6 applies depends principally on whether the limitation uses the term "means." When that term is not used, "we presume that the limitation does not invoke § 112 ¶ 6." Id. The presumption "is a strong one that is not readily overcome." Id. at 10.
Presumption Not Overcome
Given the absence of the term "means" in the disputed limitations, the court focused its analysis on whether ThyssenKrupp had overcome the "strong presumption" against application of § 112 ¶ 6, concluding that it had not. In reaching this conclusion, the court agreed with Inventio that it should consider the written description in determining whether the claims recite sufficient structure. "[I]t is proper to consult the intrinsic record, including the written description, when determining if a challenger has rebutted the presumption that a claim lacking the term "means" recites sufficiently definite structure." Slip Op. at 12. Applying this rule, the court found that the terms "modernizing device" and "computing unit" provided, at least in the context of the two patents at issue, sufficient structure:
"In this case [] the claims recite a “modernizing device,” delineate the components that the modernizing device is connected to, describe how the modernizing device interacts with those components, and describe the processing that the modern-izing device performs. The written descriptions addition-ally show that the modernizing device conveys structure to skilled artisans. Thus, this is not a case where a claim nakedly recites a “device” and the written description fails to place clear structural limitations on the “device.”"
Slip Op. at 15. The CAFC applied similar reasoning to "computing unit."
Is The Court Effectively Applying a Presumption Against Indefiniteness of Functional Claim Elements?
Under Supreme Court precedent, a claim may be invalid for indefiniteness if it contains functional claim limitations. See General Electric Co. v. Wabash Appliance Corporation, 304 U.S. 364, 371 (1938); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942); c.f. Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Section 112 ¶ 6 provides the exception discussed above.
I question how viable this aspect of the indefiniteness doctrine is in practice, however, at least under the Federal Circuit's current approach. Under cases such as Inventio, the CAFC's framework for analyzing indefiniteness based on functional claiming operates like this: (Question One) Is this a means-plus-function claim element? If No, then it is not indefinite. If Yes, (Step Two) Does the written description recite sufficient structure? If No, the claim is indefinite; if Yes, it is not. Since there is a strong presumption in favor of answering "No" to Question One unless the term "means" is used, the effective result is a strong presumption against indefiniteness unless the patent drafter elects otherwise. This makes it extremely difficult for a party challenging the definiteness of a functional claim element to prevail, and seems somewhat inconsistent with the broader ideas of General Electric and United Carbon.
I could see the CAFC's rule as perhaps being justified on the ground that patents are entitled to a presumption of validity, and the indefiniteness issue is, after all, one type of validity analysis. But that does not appear to be how the court has justified its rule thus far. Instead, it has treated it solely as a claim construction question in which deference is given to the patent drafter's choice of language.
ThyssenKrupp's Motion to Strike
Following the completion of merits briefing, ThyssenKrupp filed a motion to strike portions of Inventio's reply brief on various grounds, including that it contained new and misleading arguments about the disclosure of the '861 and '465 patents. Unimpressed by ThyssenKrupp's motion, the court rejected it. "ThyssenKrupp simply disagrees with Inventio's legal arguments, and its motion seems to us to be an improper attempt to obtain the final word in the appeal, a practice that we strongly discourage." Slip Op. at 3. FIling such a motion, the court commented, "borders on the type of frivolous and wasteful litigation tactics that we have previously frowned upon." Id.
Update: For those interested in reading the offending brief, a copy can be downloaded here: Download SchmitMotionToStrike. Thanks to Hal Wegner for circulating a copy in his email newsletter.
More likely he isn’t qualified to take it, and figures his BA in Philosophy qualifies him to understand technical matters. I would stake money on it.
Well, Babble Boy, we do see the bar in 1950 having that exact same concern. They really did not KNOW when a combination claim was functional at the point of novelty. Was it an old combination with an improved element expressed functionality, was it a single means claim or its equivalent, or was it a new combination, with the most “crucial” element expressed functionally?
Regardless, I still contend that it was well recognized that there was absolutely no vice whatsoever in expressing old elements functionally. Further, these old elements fairly encompassed all ways of achieving the result regardless of the means disclosed. Means for fastening would fairly include nails, glue, and clips regardless of what means was actually disclosed.
The only problem occurred with new elements.
Ned: “Given this development, the only remaining type of apparatus claims forbidden by the Halliburton is, in effect, a single means claim that is wholly functional.”
I would argue that it is not only a single means claim that must be wholly functional to evoke Halliburton. Regardless how many elements the claim has, any claim should bite the dust if it claims at least one component that is novel only because of its function but does not use MPF language to claim that function.
If one element of a 10-element claim is a “latch for peeling apples” and that unknown function of latches is the point of novelty, the whole claim would be invalid under Halliburton, theoretically. The recitation of “latch” represents structure, therefore 112/6 does not apply and there is no MPF exception.
I say “theoretically” because some members of the CAFC, magically turn “latch” into “latch means” and thus convert the claim to MPF, thereby avoiding the Halliburton prohibition against functional claiming. But, in the absence of such judicial claim re-drafting, the claim doesn’t have to be single element to run afoul of Halliburton.
Babble Boy, well the way I view the issue is that the rule of indefiniteness applies when one is attempting to claim a result that does not employ, in the claim itself, any of the novel means or methods disclosed. So viewed, the claim in Halliburton on its face seemed quite proper, quite different from the claim in O’Reilly v. Morse, because the claim itself described the novel tuning method, albeit in an apparatus claim. Thus the consternation in the bar who recognized that the Walker invention was a meritorious advance and that the claim was arguably not indefinite under the case law such as Continental Paper Bag Co.
Where the Supreme Court went wrong, to the extent it did go wrong, was in its construction of the claim and of the invention. It construed the claim as directed to the mechanical tuner (the structure corresponding to the novel claim element). Once it did that, the claim was too broad in that it literally covered all tuners regardless of structure.
Today, we can claim the Halliburton invention, just as you said, as a method. But not at the time. The function of a machine rule was still applicable then. But that whole doctrine fell in 1968 in Tarczy-Hornoch.
Given this development, the only remaining type of apparatus claims forbidden by the Halliburton is, in effect, a single means claim that is wholly functional. But, you will note, that single means claims are not protected by Section 112, p. 6.
In my view, the form of the claim is irrelevant when speaking of claims where the sole novelty is in a single element and that element is wholly functional. Such claims claim a result and fall afoul of all the Supreme Court cases to have considered the subject.
Judge Rich must have been a very warm and gracious person. He has a huge fan club. And for him to allow you to review his files on this matter speaks volumes.
Somewhere I believe I have read that Rich was Eisenhower’s AG when he co-drafted the 1952 Act. And Federico was running the PTO.
I wish that made me feel better about the quality of their work. I mean just look at all of the ink and paper wasted because they couldn’t even number the paragraphs in 112 like every other bleepin’ statute in the Code. “First paragraph of 112” requires 22 keystrokes. “112(1)” requires 6. Somebody left the door to the asylum open as far as the Patent Act of 1952 goes.
I can slice and dice 103 into about 50 pieces — and that’s just from a grammatical point of view. From a logical point of view, anyone who honestly tries to analyze what it is saying has to be dumbfounded.
Max is sneering at me again, and probably for good reason, again. He doubts that a known element that is performing a novel and non-obvious function is patentable. Which sounds more in line with what you’re saying.
I don’t buy the “novel combination” view. If the combination is novel then it is necessary that at least one element is doing something new, or doing an old thing is a new way. At the very least, the interactions of the old elements never before combined must be new, and interacting is — to employ once again your participial language — a function.
As I say, by focusing on features (elements combined with their limitations), you pick out how (if) each element is limited by its function, and you’re good as gold.
Sorry not to respond directly to you, Max, but I got on a roll here.
BB you write: “If an old element is novel only because it is doing something new — great. It’s patentable.” and I thank you for that advice because I find it so startling. I suppose it is a joke but, sorry, I don’t get it.
Babble Boy, regarding Halliburton, I agree that the invention in that case could have been claimed as a method. But the Supreme Court construed the claim as being directed to the tuning apparatus, deeming everything else in the claim to be old. As such, the Supreme Court treated the claim as a single means claim. I think they were wrong, but we have to deal with their construction.
Bagel Boy, thanks.
The legislative history in this article is worth its weight in gold. You will find nowhere else. We went to Judge Rich’s offices, where he shared his files on both the 1952 act and a particular origins of section 112, paragraph 6.
You will see that the original draft from the Milwaukee Patent Law Association would have reversed not only Halliburton, but also Perkins Glue, General Electric v. Wabash Appliance Company and Union Carbon. It directly addressed the “functional at the point of novelty” test for invalidity. For those of you who have not read the article, the initial draft read as follows:
Where the essence of the novelty of any claim is recited in terms of means or method for performing a specified function without the recital of structure or acts in support thereof, the claim shall
not be invalid because of its functionality, but shall be construed to cover the corresponding structure or acts described in the specification and equivalents thereof.
But in the end, the statute actually enacted was quite different. Apparently, the coordinating committee did not feel authorized to reversed all the Supreme Court cases, but only wanted to address Halliburton in particular. But there was controversy as to what Halliburton actually held because it was not clear whether the novelty of the Halliburton claim lay in the combination or in the one element.
In the final draft, the statute simply authorized the use of means plus function claiming in “combinations.” However, one has to note that Supreme Court found no vice with means plus function claims as part of combinations generally and made that clear in Faulkner v. Gibbs (1948):
The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.
When one understands that the general rule of construction the functional elements in claims including means plus function elements at the time of Halliburton was to construe them to cover the corresponding structure described in the specification equivalents per the Westinghouse case, section 112 paragraph 6 can be read in the context of its legislative history only to authorize that which the Supreme Court in fact authorized in all its case law concerning combination claims. It did not in fact overrule anything, but was rather consistent with the Supreme Court case law.
We can take from this that even with means plus function claims, there may be a problem of validity if in essence the sole novelty in the claim is in a single means element and not in the combination. It was the specific intent of the drafters to exclude single means claims regardless of their form. See the remarks of Federico on this point. (You also knows that Federico and Rich strongly disagreed on whether section 112 paragraph 6 was intended to apply to the patent office. Federico believed that it did not.)
You also note that the limitation to combination claims was specifically intended to keep intact such cases this Perkins glue, Union Carbon, and General Electric v. Wabash Appliance Company.
From the above, it seems clear to me that if a claim is functional at the point of novelty within the meaning of these cases, they are invalid. The legislative history seems clear to me that regardless of the initial intent of the Milwaukee Patent Law Association, Congress did not overturn Halliburton, Perkins glue, Union Carbon, and General Electric v. Wabash Appliance Company.
As I’ve noted before, no case has directly decided the issue of the scope and meaning of section 112, paragraph 6 in terms of its legislative history. Statements in dicta that it was intended to restore the law regarding functional claims to a state prior Halliburton are clearly uninformed.
See my note to Ned above, Max.
I agree with you to the extent that a lot of the structure/function problems can be avoided by claiming the method and forgetting about the structure, and that hypothetical claim is an example of how a method claim would be preferable.
But, I believe that having the “used to” phrase as a limitation of the cauterizing device is OK. My point was that as long as structure is recited it is not MPF. And as long as structure is recited, it is OK to include a function limitation. If an old element is novel only because it is doing something new — great. It’s patentable.
At any rate, like the Walker signal filter, this cauterizing approach is a fantastic and novel discovery having tremendous social utility, and so there has to be a way to patent it. Of course, I have disclosed the invention here in the spirit of public service.
I don’t know about EPO, but Canada often lumps the element and all of its limitations together and calls that package a “feature.” Then each feature is analyzed as to novelty/non-obviousness, definiteness, etc. That seems to me to be a much cleaner way to divy up complex claims and associate functional limitations to specific structure in the claim — or if the association is not there, to see the defect.
Ned
Thanks for that Rosetta Stone article. Well done. Written in 1997 but still a lot of very useful and relevant information.
You use one to-die-for phrase: “. . . the language was participial”. It doesn’t get any better than that. Thank you.
I am particularly grateful for your review of the legislative history of the 1952 Patent Act. I have often accused the 82d Congress who passed the 1952 Patent Act as being a bunch of banana-peel-snorting-monkeys because the act is so poorly written. Your article corrects me: the monkeys were actually Ashton, Rich, Rose, and particularly, Federico. What a disaster. (Wish I was a patent litigator so I could be making mountains of dollars due to that goofed up legislation.)
I was struck-dumb by this sentence in your article: “A modem application of this doctrine is found in the decision in Holland Furniture Co. v. Perkins Glue Co.”
Perkins Glue was 1928. I would argue that it is in no way “modern”, not even in 1997 was it modern. I would say that everything prior to the 1952 Act as being pre-modern. [This is just a picked nit to show you I really read the article.]
But my primary point of disagreement is that you strongly imply without stating that Black, J. was wrong in the 1946 Walker case. I think Black’s opinion was right, and I think the courts today would consider it good law.
First I disagree with your assertion that Walker’s novelty was in the new combination. Walker’s novelty had next to nothing to do with, and was certainly not dependent upon, his structure. Walker’s discovery was that because of the pipe-collars, one could use a filter to extract useful signals from noise produced by the Lehr and Wyatt device. IOW, Walker’s core invention was a process. Unfortunately, his attorney missed that very, very essential point.
Walker’s patent describes a mechanical filter for doing the signal filtering step of the process he didn’t claim, but such a mechanical filter for extracting signal from noise was known. Even worse, Walker wanted to exclude every possible filter structure – known or unknown – from being used to extract the collar signals from the total noise. (Newman would SHS over this one.)
One presumes that by 1946 the use of electrical signal/noise filters were well known. However, Walker ignores mentioning or claiming such filters, and so one must also presume that it had not occurred to him to employ an electrical filter (or how to employ an electrical filter). He thought he was entitled to electrical filters anyway.
In effect what Walker was doing was trying to use a single species [collar detecting mechanical signal/noise filters] to claim the whole genus [collar detecting signal/noise filters] by claiming the common, or generic, function [collar signal/noise filtering].
Even if Walker had been decided after 112 was amended, the claims would have been invalid because the only structure disclosed by Walker was mechanical filters. The electrical filter is distinct structure performing the same function in a different way.
This is why I think that Black, J. was right, given the mess American patent law was then, and has always been.
To my mind, Walker was the first to see that obtaining the collar signals was the best way to determine how far down the fluid surface was. That was a brilliant piece of insight and Walker should have been able to acquire the exclusive right to exploit that insight – even if he never had any structure. To do this he should have claimed the method for amplifying the signal sufficiently to make the collar signals detectable above the noise and then using the collar signals to calculate the distance — I’m using participial language here. (That phrase makes my inner thighs quiver.)
A method claim does not require any structure. But a look at Walker’s 17 claims tells you what his real problem was – an iddiot for a patent lawyer. The claims are nothing but mind-numbing, repetitious, recitations of structure modified by function.
I will leave it for you academics to answer whether Walker could have claimed such a method in the period between Wyeth v Stone (1840) and Tarczy-Hornoch (1968) – part of the problem being the definition of “art” viz-a-viz “process.” But today, at least, Walker would obtain a patent on his method for determining the distance to the fluid, and Dick Cheney and Haliburton would have to take a license to practice their version of the method, which is precisely how it all should play out.
Now, that would be a money-maker every man would want for Father’s Day.
BTW, it’s Ralph Kramden you’re thinking of, played by Jackie Gleason.
“To the moon, Alice . . . to the moon.”
Greatest TV line ever written. Today it would get you busted for spousal abuse.
Above, BB writes:
“For instance, an element of a claim to a device for reducing the back-log of BPAI cases might be: “a 500 amp cauterizing device wherein the cauterizing device is used to cauterize the brains of low IQ examiners whereby said examiners can no longer log into the USPTO computer system and cause trouble.”
That is not a MPF element; nevertheless, the recitation of function is A-OK.”
My question: how “A-OK” is it, to use words like “is used to” in claims to a device? Seems to me like language that transforms a device claim into a method claim.
Me, I would have expected in a device claim instead some sort of functional limitation like “able to” or “suitable for” or “having the capacity to” or even “competent to”.
Hard, read my article. link to thefreelibrary.com…-a020329515
It gives a full legislative history of both Section 112, p. 2 and p. 3, now 6.
After you have read it, it would be a pleausre to discuss this issue with you.
Just to refresh everyone’s memory, the second paragraph of 35 USC 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
There is nothing there that suggests a “point of novelty test” that I can see.
functional claiming at the point of novelty is per se a violation of Section 112, p. 2.
If this isn’t the case, then 112, p2 is meaningless.
As you say, it really depends. If you actually read the cases, the functional language that is condemned is that language that tries to claim the invention in terms of the result it achieves instead of what it is.
This is best seen when a claim has a single or most crucial elements as in a claim to a composition or article of manufacture. It can apply to combination claims where the combination is largely old but where one of the old elements has a variation which is claimed functionally.
If the invention is a new combination, there is absolutely no vice that any of the elements is old. As such, all of them can be functionally claimed with no vice.
The problem with combination claims centers exclusively on the situtation where a single element is new and where the combination itself is largely old, as said before. Under these circumstances, the functional claim element may indeed be attempting to claim the invention functionally, in terms of a result.
When we have this situtation, the rule of Halliburton applies. It applies only here and now where else in combinations.
With respect to article of manufacture claims, see generally Perkins Glue and United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942); and General Electric Co. v. Wabash Appliance Corporation, 304 U.S. 364, 371 (1938)
BA, I can’t speak for David, but I believe the problem is in differing understandings of the term “functional claiming.”
Where a non-MPF entity claim resorts to recitation of function INSTEAD of structure, the Walker prohibition applies. The CAFC sometimes appears to rescue such claims by interpreting terms such as “device” and “mechanism” as if they were “means for.”
But where the claim recites the structure AND the function of that structure — well, that’s non-MPF functional claiming, and it is not at all frowned upon.
For instance, an element of a claim to a device for reducing the back-log of BPAI cases might be: “a 500 amp cauterizing device wherein the cauterizing device is used to cauterize the brains of low IQ examiners whereby said examiners can no longer log into the USPTO computer system and cause trouble.”
That is not a MPF element; nevertheless, the recitation of function is A-OK.
Blackacre, check below on two more posts from me on this topic, including a article I co-wrote with Rudy Hoffmann concerning the whole topic. It gives a blow-by-blow on the Halliburton case and the legislative history of 112, p. 6.
Well, maybe David can step back in here and clear this up for us.
David: “I thought the news from 1966 had reached everyone (well, except for a few behind-the-times examiners):”
Apparently it didn’t reach me either. Since when does a CCPA opinion take precedence over the USSCt Halliburton v. Walker prohibition of functional claiming?
The only thing the CAFC can do — and does do — is to twist itself inside out trying to import structure into the claim, usually by making non-MPF language look like MPF.
Now, one must take note that the Walker claim at issue in 1946 was a MPF claim, which was common years before 112 was amended. And, most likely, that claim would have been deemed valid if litigated after 1952. But that still does not change the USSCt’s prohibition against functional claiming outside the MPF format.
Has there been some USSCt case between Walker in 1946 and the present that condones functional claiming outside the MPF format??
As a FN, the Walker case is also interesting in that it is one of the few USSCt patent cases I know where the Court first affirmed the circuit in finding validity of the patent and then re-heard the case and reversed. I presume Justice Burton, the only dissenter, wrote the opinion the first time around.
For a full description of the development of the law of functional claiming, together with a full legislative history of Section 112, p. 6, see Rosetta Stone for the Doctrines of Means-Plus-Function Patent Claims, The; Hofmann, Rudolph P. Jr.; Heller, Edward P. III, 23 Rutgers Computer & Tech. L.J. 227 (1997) link to thefreelibrary.com…-a020329515
Regrading Halliburton v. Walker, this is what the court in Donaldson said about that case:
“The record is clear on why paragraph six was enacted. In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 [71 USPQ 175] (1946), the Supreme Court held that means-plus-function language could not be employed at the exact point of novelty in a combination claim. Congress enacted paragraph six, originally paragraph three, to statutorily overrule that holding. See In re Fuetterer, 319 F.2d 259, 264 n.11, 138 USPQ 217, 222 n.11 (CCPA 1963) (noting that it was Congress’s intent to restore the law regarding broad functional language in combination claims to its state prior to Halliburton).”
Now, simply compare the court’s statement with In re Fuetterer. They are NOT the same thing. One speaks of MPF, the other of functional claiming in general.
Now the statute does speak to MPF claiming and recites the prevailing rule of construction, but says absolutely nothing about broad functional claiming at the point of novelty, and says nothing at all about whether even MPF claims can be employed at the point of novelty.
From link to kuesterlaw.com
Subsequently, in 1949, Subcommittee No. 3 of the Committee of the Judiciary undertook a complete study of the patent laws. After several minor changes to a proposal by the Committee, a bill embodying the present 35 U.S.C. Sect. 112, paragraph 6, became law on July 19, 1952. While formal legislative history is very sparse, the Chairman of Subcommittee No. 3, Hon. Joseph R. Bryson, Representative from South Carolina, discussed the provision of the bill in an address to the Philadelphia Patent Law Association on January 24, 1952, where he stated in pertinent part:
This provision in reality will give statutory sanction to combination claiming as it was understood prior to the Halliburton decision. All the elements of a combination now will be able to be claimed in terms of what they do as well as in terms of what they are.[4]
In addition, one of the authors of the Act of 1952, P. J. Federico, who was also Examiner-in-Chief of the Patent Office, wrote:
The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, materials or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions, and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S. Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined.[5]
Note, that Frederico did not understand Section 111, p. 6, to overrule Halliburton. Not at all.
Both Fuetterer and Donaldson are dicta on the issue of Halliburton. The issue of what of Halliburton and all the prior Supreme Court cases regarding functional claiming at the point of novelty has never directly been resolved by the courts since 1952.
As observed by Blackacre, if Halliburton is not overruled, and it does not appear that it was overruled, then functional claiming at the point of novelty is per se a violation of Section 112, p. 2., and it is even arguable that this remains the case even if MPF language is employed.
Blackacre, there are a lot of people who seem to believe or wish to believe that Halliburton v. Walker was totally overruled by Section 112, p. 3, now 6. For example, the Halliburton case I cited does not even discuss it, preferring to analyze the claim to determine whether the functional element can be construed to something having definite scope.
But, as you recognize, that was the very argument made to the Supreme Court. The argument was made that if the functional element could be construed to cover corresponding structure and equivalents per Westinghouse, there was no actual problem with “scope.”
However, as we know, the Supreme Court thought the larger problem was notice, not scope – as they did recognize that the conventional rule of construction of functional elements was to construe them to cover the corresponding structure, etc recited in the specification and equivalents thereof.
You will recognize in the current ABA resolution on indefinitenes, that they too are totally unconcerned with the issue of notice, preferring the Federal Circuit approach that if a claim can be construed it is definite enough.
This issue is currently before Supreme Court in the petition for writ of certiorari in the Applera case, where the Justice Department has filed a brief supporting the Federal Circuit view of things. As far as I know, not a single party in that case as cited Halliburton v. Walker. Curious.
Circling back, it appears that the vast majority of practitioners believe that Halliburton v. Walker was overruled in its entirety. If this is the case, the question then becomes whether functional elements in the claim can be construed and be made definite regardless of whether they are expressed as MPF. But, given the language of Section 112, p. 6, this surely cannot be right, as the statute specifies the form of the claim element that is saved from the rule of Halliburton v. Walker.
I would prefer that the question be presented directly to the Supreme Court because it is not at all clear that Halliburton was overruled in its entirety.
Ned raises one Halliburton case, but my understanding of 112/6 is that it was originally added in 1952 (as 112/3) to allow a way around the 1946 USSCt case Halliburton v. Walker [329 US 1] where the Court prohibited functional claiming at the point of novelty.
Despite what the CAFC says, the Halliburton prohibition against functional claiming is still intact unless 112/6 applies.
So I don’t get Dennis’ proposed “Question 1” result. If you have functional language in the claim and MPF is not used, then the answer should be: Yes, the claim is indefinite as per Halliburton (1946).
I know that Pressman and other gurus advocate functional claiming w/out MPF, but unless Halliburton’s prohibition against functional claiming has been overturned by the USSCt, I don’t see how you can get away with it unless you use MPF.
“It seems only the “connecting computer unit to a floor terminal” portion of step (b) could be carried out outside of the US. ”
Since step (b) is an installing step, and since a floor terminal portion must be on site, the only way this could be carried out outside of the US is if the entire installation is caried out outside of the US.
This is a method claim – not an appartus claim – making the non-staple article is not coavered by a method claim.
“Special accreditation to represent clients”… What, did you fail the patent bar exam or something? It’s not exactly rocket science to get and keep a registration number.
Thanks, 6. Good advice there. Very good.
As Alice boards the elevator, Jackie Gleeson punches the destination MOON button and exclaims,
“Now Alice, straight to the Moon!”
Just call it a method of waging a secret illegal war and the US government’s recent actions can’t be used as prior art against you without them making the admission that their secret war is illegal.
“In the end, if we have two possible constructions remaining, one that reads on the disclosed embodiments and one that does not, can we say that the construction that does not read on any of the disclosed embodiments is unreasonable?”
Well Ned, first of all many times there are many embodiments that (at least attorneys will argue in certain circumstances) are supposedly implicitly disclosed. Usually, if the examiner’s interpretation is even nearly reasonable and it is one of two possible interpretations remaining then “outside the spec embodiment” was probably implicitly disclosed even if it wasn’t explicitly disclosed. At least that is the situation in my office usually since my BRI doesn’t usually go that far overboard.
But, discounting the implicitly disclosed embodiments then many times yes, it is permissible to argue that the one interpretation covering a disclosed embodiment is the only reasonable one from amongst the two purely by reason that it is the only one that makes sense in the context of the disclosed embodiments. And it is permissible for the PTO to accept the argument and go about its day. Likewise, it is permissible for the office to not accept it if there is a decent reason, and especially so if the applicant has plenty of WD to be able to amend such that the other interpretation then is no longer an issue.
I wouldn’t say that a claim ever has to be amended to clearly read on the specification because of a 112 2nd. I think I’ve noted this in the past several times, maybe even for you. Especially if we’re talking about an original claim. The only time I’m really worried about a claim reading on the specification (or more specifically the whole originally filed application) is in the WD context.
“6, in the PTO, most examiners can construe every term in a claim broadly. ”
And if you have some balls, tell them how it is, speak with authority, yet respectfully and not too condescendingly, and hold their hand enough, then you can get them to recant the overly broad interpretation. And before you say it can’t usually be done or can’t always be done, I have yet to find an examiner who I haven’t been able to talk out of a bad claim interpretation, and I’m up against some really st upid mo fo’s working in the COPA art we’re helping out. It’s no wonder why they have a bad backlog. For the most part they seem to not know how to examine, and that includes construing claims, noting limitations in claims, etc. etc. on down the line. Not to even mention every other case they have is some software nonsense needing a 101. And I’ve been hearing that other examiners from my TC helping those guys out are experiencing the same thing nearly across the board.
I too was inventing. My method: funding a war that congress opposes:
1) Sell arms to an embargoed country or insurgency at inflated prices;
2) Use profits to bypass treasury and fund the war that congress opposes and will not fund from the treasury.
Humm…
Perhaps the patent might fail from prior art.
OK, point taken Malcolm.
The White House did say startups that needed funding by VCs.
That narrows it bit, but still within that smaller universe, the startups are against the bill the White House says helps them.
Now, there are several possible explanations for this:
1) The While House truly believe what it is saying is the truth;
2) The While House knows the truth and is intentionally lying to us; or
3) The White House is telling white lies — it believes the speed up portion will help the startups while ignoring the opposition of the startups to the rest of the bill making it seem that the bill is favored by startups when the truth lies elsewhere.
What do you think, Malcolm?
Oh but wait, maybe I should specify that the lists are computer readable as well so the PMD doesn’t get me when 103 rolls around.
6, in the PTO, most examiners can construe every term in a claim broadly. If he does, most times the construed claim will have no recognizable relation to the specification. So what cabins the choice of constructions? Internal consistency within the claim, with other claims, with definitions or unambiguous usage in the specification? All of these, I think.
In the end, if we have two possible constructions remaining, one that reads on the disclosed embodiments and one that does not, can we say that the construction that does not read on any of the disclosed embodiments is unreasonable?
Or, do we say that the claim is indefinite and has to be amended to clearly read on the specification?
I don’t think the Feds have been clear on this. In fact, I would suggest that their cases are inconsistent.
Your views?
Hey you guys I was just sitting here in the office inventing and I was thinking about a method comprising:
selling someone a computer with a bunch of components inside,
putting a list of the names of the components and the technical specifications therefor on the computer, in the memory of the computer, and online in a special user profile for the someone that will never be deleted, and wherein the selling the computer doesn’t suck balls.
To be clear, I feel like this might spur a revolution in non-sucky experiences with buying a computer. Specifically you might find yourself with the specifications you need AT HAND at all times.
What do you guys think? Patent eligable? That method is TOTALLY tied to a computer (even specifically a computer with a bunch of components inside!) and to the interwebs amirite?
” WOW!!! How cool is that???? And how this incredible feat made possible? You better sit down for this one: they use a POWERFUL COMPUTER BRAIN! ”
I kno right?
“Now here comes the super genius part. You would assume that to upgrade an old system like this you’d have to tear the building down. You know, just like when you install a wireless stereo system in your house so you can control what music you hear on the first floor even when you are on the second floor, you basically have to raze your house to the foundation. But these guys figured out that you can just hook a POWERFUL COMPUTER BRAIN up to the old system in such a way that the computer, with the help of a “destination dispatch algorithm” (I think computer geeks sometimes call that software or something) and a digital to analog converter basically just tells the old system how to deal with the new information! The details, of course, are pathetically easy for anyone to figure out so there isn’t any need to cover that stuff in the claims.
The jaw-dropping insight of using a new computer and an analog-digital coverter to “modernize” an older system takes a while to sink in. I have a feeling that a LOT of other fields are going to follow the leadership of these folks. I sense a revolution brewing ….”
I lulzed. The best part about this case is that it probably isn’t even novel and nobody has bothered to search it well enough. If I have to google yet another 102b so help me god…
Ned Heller The White House emphasizes just how important startups are to jobs and new technology, and just how important patents are to startups ———————
but it supports the patent reform bill that virtually every startup OPPOSES for good reasons stated.
Really? Was there a poll of a large number of new businesses that I missed?
99% of startups need patents like a fish needs a bicycle.
1. A method of modernizing an elevator installa- tion having at least one elevator controlled by at least one elevator control by way of at least one call report, comprising:
a. installing at least one floor terminal at each floor served by an elevator controlled by an elevator control for at least one of the input of destination call reports and for recognition of identification codes of users;
b. installing at least one computing unit and con- necting the at least one computing unit to said floor terminals for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes, and for the output of at least one destination signal; and
c. installing at least one modernizing device and connecting the at least one modernizing device to said floor terminals and said at least one computing unit for reading the destination signal, for converting the destination signal into at least one call report and for controlling the elevator control by way of the call report.
Does anyone have any problem with the form of the claim itself? It postures as a method claims, but seems to actually recite a system.
Huh? It’s plainly a method, comprising four installing and/or connecting steps.
Is the elevator system an infringement
If you assemble an elevator system — any elevator system — and you don’t follow these steps, you don’t infringe this method claim, nor does the completed system.
is the contractor who puts it all together the infringer?
Yes.
What if part of the systems is assembled outside the US
It seems only the “connecting computer unit to a floor terminal” portion of step (b) could be carried out outside of the US. Doesn’t seem like that would ever happen unless someone in the US was causing this this non-staple article to be foreign made.
or by a third party?
That would depend on a few other facts, wouldn’t it, Ned?
Depends
good posting, ned
The cxxppiness of these claims is fairly awesome.
The invention, as described by the Federal Circuit is a “modernized” (LOL) elevator system whereby instead of allowing people in the lobby only a choice of “up” or “down” actually allows the passenger to enter their desired destination (e.g., “Plaza Level” or “Floor 12” or “Parking Lot”). WOW!!! How cool is that???? And how this incredible feat made possible? You better sit down for this one: they use a POWERFUL COMPUTER BRAIN!
Now here comes the super genius part. You would assume that to upgrade an old system like this you’d have to tear the building down. You know, just like when you install a wireless stereo system in your house so you can control what music you hear on the first floor even when you are on the second floor, you basically have to raze your house to the foundation. But these guys figured out that you can just hook a POWERFUL COMPUTER BRAIN up to the old system in such a way that the computer, with the help of a “destination dispatch algorithm” (I think computer geeks sometimes call that software or something) and a digital to analog converter basically just tells the old system how to deal with the new information! The details, of course, are pathetically easy for anyone to figure out so there isn’t any need to cover that stuff in the claims.
The jaw-dropping insight of using a new computer and an analog-digital coverter to “modernize” an older system takes a while to sink in. I have a feeling that a LOT of other fields are going to follow the leadership of these folks. I sense a revolution brewing ….
What sort of a doofus couldn’t figure out what it is from just the discussion in the write up?
Well, the defendant and the district court judge, for one. How much money was wasted on construing the term “modernizing device”? And note that the term *still* hasn’t been construed.
Claim drafting FAIL.
I should note that the simplest way to solve this issue of piss poor drafting is to put the onus on the person who is doing the piss poor drafting, the applicant or attorney. Charge them an extra 200$ for any claim that includes this kind of language and you’ll see behavior of this sort taper off right QUICK.
“FURTHER RESOLVED, that the Section supports, in principle,
that use of relative language or words of degree in an issued patent
claim does not itself render a patent claim indefinite, and that
application of different definiteness standards for patentability and
validity do not conflict given the different nature of proceedings
involving issued patents as compared with pending
applications before the U.S. Patent and Trademark Office and an
Article III Court;”
Meh, idk about that. But if they will agree that it per se causes indefiniteness in prosecution then I might make that deal.
“, that the Section supports, in principle,
that an issued patent claim that is amenable to more than one
reasonable construction is not indefinite if a court, by applying
established principles of claim construction, can reasonably choose
one of those possible constructions to resolve any real and concrete
dispute between the parties regarding infringement or invalidity;”
Meh, again, not the best situation, but it would be an ok trade if they agree to the principles in Miyazaki regarding behavior before the office.
“the Section supports, in principle, that an
issued patent claim (including a claim that is susceptible to more
than one reasonable construction and/or has terms of relative
degree) is not indefinite under 35 U.S.C. section 112, second
paragraph, if a court can construe that claim to the extent necessary
to resolve any real and concrete dispute between the parties
regarding infringement or invalidity.”
Yeah that isn’t so bad.
But, if we put all the pressure on the PTO to do a good job while they can’t be bothered to teach examiners about miyazaki etc. then you’re just going to have loads of patents floating around that were issued by ignorant examiners.
I haven’t read this sht pile of a case just yet. Doing one more FOAM for the quarter.
Well idk why that is just for me. I mean I’ve long understood that it is improper to be making a 112 2nd ind. rej. while at the same time as including art rejections. Nevertheless, the office insists that we make them… and the backlog just gets bigger. Maybe if they’d squash that sht without giving a merits based action then people would stop drafting so many indefinite sht piles.
Here an ABA committee on indefiniteness:
112 COMMITTEE (PATENT LITIGATION) LEADERSHIP
(2010-2011 TERM)
Meeting Minutes (May 9, 2011)
2. Applera v. Enzo Biochem (USSC Docket No. 10-426)
• Cert. petition pending before USSC.
• Awaiting briefing from Solicitor General to provide Govt’s position on issue.
• Resolution on definiteness standard – ADOPTED!!
• IP Council call held on 3/15/11 to consider revised resolution.
• Council overwhelmingly voted in support of the resolution with minor change!
• Revised Resolution – as approved by Council
RESOLVED, that the ABA Section of Intellectual Property Law
supports, in principle, that an issued patent claim meets the
definiteness requirement under 35 U.S.C. section 112, second
paragraph, so long as a person of ordinary skill in the art would
understand what is claimed, and that such an analysis depends on
whether the issued patent claim in question can be construed by a
court to the extent necessary to resolve any real and concrete
dispute between the parties regarding infringement or invalidity;
FURTHER RESOLVED, that the Section supports, in principle,
that use of relative language or words of degree in an issued patent
claim does not itself render a patent claim indefinite, and that
application of different definiteness standards for patentability and
validity do not conflict given the different nature of proceedings
involving issued patents as compared with pending
applications before the U.S. Patent and Trademark Office and an
Article III Court;
FURTHER RESOLVED, that the Section supports, in principle,
that an issued patent claim that is amenable to more than one
reasonable construction is not indefinite if a court, by applying
established principles of claim construction, can reasonably choose
one of those possible constructions to resolve any real and concrete
dispute between the parties regarding infringement or invalidity;
NOW THEREFORE, the Section supports, in principle, that an
issued patent claim (including a claim that is susceptible to more
than one reasonable construction and/or has terms of relative
degree) is not indefinite under 35 U.S.C. section 112, second
paragraph, if a court can construe that claim to the extent necessary
to resolve any real and concrete dispute between the parties
regarding infringement or invalidity.
The flagpole case I referenced was this:
No. 10-426
Title:
Applera Corp., et al., Petitioners
v.
Enzo Biochem, Inc., et al.
Current status:
May 31 2011 DISTRIBUTED for Conference of June 16, 2011
Why not provide multiple offices under independent management and with independently set fees. Applicants can file in any of them.
What would you expect?
Assume the trade offs were speed, cost and quality.
I expect that
1) Firms will file in the office that gets the patent the cheapest as they are measured on cost.
2) Inside counsel will go for price as that is how they are measured.
3) Startups will trade cost for speed and quality, but if forced to choose one, speed.
Who would choose quality?
Cue the “turgid member”, “lubricious coating”, and “vibrating embrace” replies…
I only realized what I had written after I saw it posted and analyzed the grammar.
Fine…for a blog post!
The brief read like it was penned by an overly-turgid high school debate team member.
Fine for a blog post, but for a brief?
Les, there are a lot of assumptions in your statement ….perfectly this and perfectly that.
As discussed in In re Swinehart as discussed below by David B., the problem of functional claiming at the point of novelty is claim scope, whether the claim is to a result regardless of the means or steps disclosed, or whether the claim fairly defines the invention so that one knows what is within and without the claim. Crictical to this analysis, in some cases, is whether the specification describes tests or limits so that one can determine the scope of the claim. If not, the claim will likely be “indefinite” as it broadly claims subject matter not described or enabled in the words of O’Reilly v. Morse.
Section 112, p. 6, will save a functional claim if there is corresponding structure described — as the claim is limited to that structure and equivalents. (I also think that the claim is not indefinite if the corresponding structure is well known and is identifiable from what is described.)
Finally, in court, functional language is almost always construed to cover the corresponding structure and equivalents regardless of Section 112, p. 6. Almost always — and this is the problem. There is no consistent rule. There are recent cases that seem to claim, for example, a genus functionally without limiting the claim to the disclosed examples and equivalents. I refer here to the recent case, I cannot recall the name, but it claimed a “flagpole” molecular structure functionally but gave only a few examples. The Feds seemed to construe the claim to any molecular structure that could perform the flagpole function regardless of whether it was an equivalent of the disclosed structures.
The lower court had held the claims indefintite because of the scope was indefinite. The Feds reversed solely on the basis that the claim could be construed and seemed to throw into the askcan the whole issse of indefiniteness of scope.
Does anyone have any problem with the form of the claim itself? It postures as a method claims, but seems to actually recite a system.
How does one construe such a claim? Is the elevator system an infringement, or is the contractor who puts it all together the infringer? What if part of the systems is assembled outside the US or by a third party?
And, one might add, if no means are disclosed, the claim is held indefinite regardless of whether the means is well known or easily done given what is disclosed.
I might claim, for example, means for adding one plus one. I disclose only a computer. My claim will be held indefinite solely because I do not disclose the algorithm for adding 1 + 1 in the specification. Complete and utter garbage in my view.
Now, if the algorithm is not well known and not derivable from what is disclosed, then we do have a problem. The claim to me fails under the written description and enablement clauses of Section 112, not under Section 112, p. 2.
In the present case we also have the suggestion that the algorithms were intentionally not disclosed, but kept as a trade secret. This suggests that the claims just may be invalid for failure to disclose best mode, even if they are otherwise enabled.
Friggin remarkable!!!!
The White House emphasizes just how important startups are to jobs and new technology, and just how important patents are to startups ———————
but it supports the patent reform bill that virtually every startup OPPOSES for good reasons stated.
Are we not living in a land of make believe and magic? We see the feint with the one hand, and ignore what the other, the hand that has the dagger that is going to stab you in the back.
Start here: /media/docs/2009/05/fd073072.pdf
6, just for you, the board here vacated a final rejection under 103 solely on the basis that the claims were too indefinite.
“We vacate the rejection of claims 1-25 under 5 103 as being
unpatentable over Eggleston and Wolff. A rejection of a claim, which is so
indefinite that “considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims” is needed, is
likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(holding that the examiner and the board were wrong in relying on what at
best were speculative assumptions as to the meaning of the claims and
basing a rejection under 35 U.S.C. 5 103 thereon.)”
“ would be happy to do your legal research for you”
Actually, that would be the legal research for yourself, after all, you are the one who stated a proposition without support.
“held that corresponding structure had to be set forth in the specification” – this is not the same as an algorithm.
Provide the proper cite to the claim you make.
David, but see Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).
If this is a serious request and not just spam, I would be happy to do your legal research for you. But since in it obvious is not a serious request, I would simply point to the plethora of cases regarding MPF and computers, and for the recent case which I was believe authored by Rader that held that corresponding structure had to be set forth in the specification and could not be referenced or well known structure. Since then, of course, the Feds have been carving exception after exception because their rule in the particular case might have made some sense, but it didn’t make sense in other contexts. Thus the numbers of cases carving out exceptions.
Thanks. A good insight into a procedurally unusual brief. It wasn’t so nasty that it warranted comment, and if they had been correct the idiom would have been fairly milquetoast. Funny that the court should object to the idiom, which the court itself uses sparingly. I guess the fact that the court decided in favor of Inventio demonstrates that the mischaracterizations were not so blatant.
I just used the B word in a reply, which prompted the non-movant to submit a surreply to withdraw the “blatantly wrong” factual assertion, but now I am concerned that my reply might be seen as “nasty.” I’ll avoid the B word in the appeal!
old… out of context…
Now if this isn’t a beacon call to Ned Heller…
“prior case law requiring that algorithms be disclosed in the specification when claiming computer inventions using MFP”
Algorithm, you say? “or easily constructed from the description” is quite a bit different from algorithm.
Cite please.
Is there a shift register or other analog to digital conversion hardware that just might preempt all uses of such? Is there a process with such a machine called out that would, never-the-less still be abstract?
Signals, hmmm, that too smacks of something that is just too transitory too merit patent protection…
Tell that to the editors of the MPEP, Examiner Mooney.
…is this “modernizing device” a computer or what?
It has a processor in it, but it also includes some analog components, since it has to communicate with “un-modern” elevator control signals. Its description is actually quite detailed. The CAFC got this one right.
You don’t have it quite right Max. Computing means should not invoke 112 six and the specific best mode device you referred to. –Means for computing– would.
Someone describing new retrofit equipment might. Whats wrong with it? What sort of a doofus couldn’t figure out what it is from just the discussion in the write up?
Start your analysis with the stricken brief.
And, hey Dennis, the problem is not functional languange in claims. It is functional language at the exact point of novelty which essentially converts the claim into a claim for a result. Cf. O’Reilly v. Morse.
Because nothing is more persuasive than 40 year old CCPA cases with their holdings taken out of context.
The problem here is there prior case law requiring that algorithms be disclosed in the specification when claiming computer inventions using MFP. Now the Feds go out of their way to not construe computer claims as MPF just to avoid their prior cases.
So, we now have a drafting trap for he unwary where the differences in result makes no sense whatsoever.
The Feds really need to revisit their prior case law on corresponding structure. If that structure is well known, or easily constructed from the description, it is disclosed.
In this case [] the claims recite a “modernizing device,” delineate the components that the modernizing device is connected to, describe how the modernizing device interacts with those components, and describe the processing that the modernizing device performs. The written descriptions additionally show that the modernizing device conveys structure to skilled artisans.
I haven’t read this case but is this “modernizing device” a computer or what? What kind of a doofus would use such a term in a patent claim?
Shhhhh,
You will wreck the Shill party we are having.
This piece opens, “Patent claims may be indefinite due to their use of functional language untethered to any structure.” Except in the context of § 112 ¶ 6 and design patents, I don’t think that’s accurate. I thought the news from 1966 had reached everyone (well, except for a few behind-the-times examiners):
“There is nothing intrinsically wrong with the use of [functional language] in drafting patent claims … Indeed we have even recognized in the past the practical necessity for the use of functional language.” In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971).
“It is true that the italicized portions are ‘functional’ but we do not regard that as good ground to give them ‘no weight.’” In re Land, 368 F.2d 866, 882, 151 USPQ 621, 635 (CCPA 1966).
I’ve uploaded a copy.
Where can we find a copy of the brief online?
I read the motion – it’s definitely a bit on the strongly-worded side, but I’m not sure it’s so “nasty” as to be beyond the pale, or deserving of a smackdown aside from the fact that it’s essentially an extra merits brief.
Dennis –
You say, ” This makes it extremely difficult for a party challenging the definiteness of a functional claim element to prevail, and seems somewhat inconsistent with the broader ideas of General Electric and United Carbon.”
As if this is a bad thing. As your described by your write up the claims are perfectly understandable, the spec is perfectly clear and the court came to the right conclusion.
It is not necessary to recite a litany about microprocessors, circuit boards, memory and input and output devices for one of ordinary skill to know how to make this invention without undue experimentation. Moreover, such a litany might distract from the modernizing technique. Legal posturing that takes the opposite stance, whether it be by an examiner or infringer is just that…posturing.
How about examining something DIS-functional.
The USPTO is the ONLY US Agency that requires special accreditation to represent clients. An attorney can brief the US Supreme Court, but needs a credential by the USPTO alone, to file a patent application before the USPTO.
If that’s not enough, the USPTO now wants to improve US competitiveness by setting and keeping their own fees.
So, in the USPTO we have, a) a 100% monopoly to issue patents, b) with sole pricing discretion, c) deciding who they will work with.
Their shrine to “innovation” should be a tombstone. Anywhere else but the US Government, the antitrust forces would be howling.
I should add that it’s not so dumb if “computing means” is not followed immediately by functional language…
It’s only per se dumb because of Section 112, par. 6. Please continue using it in Europe – I do.
I appreciate the replies Cy,EG, and am reassured that it is the statute, not the court here, that is exalting.
I’m a bit worried now though, to read that reciting “computing means” is per se “dumb” (whereas presumably “computing device” isn’t). That would be because “computing device” would cover any computing means under the sun whereas “computing means” covers ONLY the specific best mode computing device (and such computing devices as are mechanical equivalents of that single computing device). Got it now. I think.
Max,
The name of the game is “form” when talking about Section 112, paragraph 6. Unless you couple “means” with “for [doing some function],” Section 112, paragraph 6 doesn’t (or shouldn’t) apply. Most of us on this side of the pond now avoid MPF because of the legal baggage MPF unfortunately carries (as the Federal Circuit has interpreted Section 112, paragraph 6) of only covering those “means” which are specifically exemplified in the specification.