In a Press Release today, the Patent Office released new examination guidelines related to interpretation of 35 USC 112, addressing clarity and general requirements of patent applications. From the release:
These new guidelines, which address section 112 of the Patent Act, will promote patent quality by requiring that applications distinctly claim the invention so that the public is clearly informed of the patent rights granted. This, in turn, will create more certainty in the marketplace by ensuring a foundation of the patent system—that the scope of patent rights granted are clear and supported by the invention disclosed to the public—is properly maintained.
The guidelines explain that words in the claims should be given their plain and ordinary meaning unless doing so would interpret the claims inconsistently with the specification. Examiners are also directed to the applicant’s specification as the best source for identifying evidence of the plain and ordinary meaning.
With respect to claim language ambiguity, Examiners are instructed to apply a lower threshold than with issued claims:
For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under § 112, ¶ 2 is appropriate.
With respect to “functional” (as opposed to “structural”) claims, the notice states that functional claiming is specifically permitted by 112, sixth paragraph (allowing claims to be described as a means for performing a stated function). Notwithstanding, some functional claims may be indefinite under 112 2d paragraph:
For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear.
Other issues covered include the ever-popular terms of degree, subjective terms, Markush groups, and means-plus-function claims.
Interestingly, the notice also clarifies examination of dependent claims:
For example, a dependent claim must be rejected under § 112, ¶4 if it omits an element from the claim upon which it depends or it fails to add a limitation to the claim upon which it depends.