¶ 7.34.22    Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function

Applicant asserts that the claim element "[1]" is a limitation that does not invoke 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, 6th Paragraph applicant may:

  • (a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
  • (b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.

2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.

4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.