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:
“Adding a quantity of X sufficient to cause a change in phase.” (When is the change deemed complete?)
“Disposing an opaque fluid between …” (What degree of light transmission is permitted in this case?)
“Measuring a signal exceeding a selected threshold value” (What are example thresholds, either in an absolute sense, or a relative one?)
“Applying an operational voltage” (When does the device become “operational”?)
The guidelines can help you determine whether or not you have provided sufficient support in individual cases. In addition, a careful perusal of the guidelines can also provide some practical advice to patent prosecutors after the application has been filed. For example, here is a quote that gives some useful direction, especially in situations where the original application doesn’t appear to provide quite the support you’d like to see during prosecution:
“If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). During prosecution, an applicant may also overcome an indefiniteness rejection by submitting a declaration under 37 CFR 1.132 showing examples that meet the claim limitation and examples that do not.”
For additional guidance and further reading, the official version of the Patent Office document can be found here. Look them up and see what you find!