USPTO Releases Updated §112 Guidance

On January 7, the U.S. Patent and Trademark Office (USPTO) released “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” that provides guidance to USPTO examiners and personnel.  The §112 guidance explains the proper analysis for (i) examining means-plus-function limitations under 35 U.S.C. §112(f) and determining compliance with 35 U.S.C. §112(b) for computer-implemented claims invoking §112(f), and (ii) examining functional limitations in computer-implemented claims for compliance with 35 U.S.C. §112(a).

In particular, the guidance explains the applicability of §112(f) to computer-implemented claim limitations in view of Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc), and the inquiries necessary to determine whether a functional claim term invoking §112(f) is definite under §112(b).  For a computer-implemented claim limitation invoking §112(f), “the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. §112(b).”

Further, the guidance explains the disclosure requirements under §112(a) when claiming computer-implemented inventions using functional limitations, as discussed by the Federal Circuit in Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015).  Specifically, the guidance reiterates the Federal Circuit’s analysis of computer-implemented functional claim language in Vasudevan for compliance with the enablement and written description requirements of 112(a), which stated that the specification must describe a computer-implemented invention in terms of how the functional result is achieved (e.g., an algorithm and/or a finite sequence of logical steps), and not merely by the functional result itself—even for non-means-plus-function claim limitations.  However, the guidance also acknowledges that computer functions that are well-known in the art need not be described in detail in the specification to meet the written description requirement.

This new §112 guidance appears to summarize existing law and USPTO policy regarding examining computer-implemented claims for compliance with 35 U.S.C. §112.  From a practical standpoint, we do not expect any substantial changes to examination as a result of these guidelines.