This Post is from Mark Muller, Shareholder at Schwegman, Lundberg & Woessner, P.A.
Supplementary examination guidelines for Section 112 were recently published in the Federal Register and sent out for public comment. While the details may not be too exciting, it’s a good opportunity to remind ourselves that when claims use functional language referencing some degree of “goodness” or fit, etc. we should always ask: Have I put something in the specification to support an absolute/relative reference for comparison, or that enables determination of that quality?
This may seem obvious to many, but it’s surprising how often the issue arises. The guidelines give a fairly obvious example, where a claim to a computer interface screen with an “aesthetically pleasing look and feel” (without sufficient corresponding information in the specification to define what this might mean) is noted as being insufficient to meet the requirements of Section 112. So obvious is the problem in this case that even on its face, many would deem the claim to be lacking. Nevertheless, examiners continue to encounter deficient claims. As an aid to your own drafting efforts, here are some less obvious, but perhaps more common usage examples that I have made up to spur your thinking about claim elements that have the potential for exceeding the bounds of Section 112:
