¶ 7.30.05    Broadest Reasonable Interpretation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph: Use of "Means" (or "Step") in Claim Drafting and Rebuttable Presumptions Raised

The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.

As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph:

  • (A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
  • (B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
  • (C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

Use of the word "means" (or "step") in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Absence of the word "means" (or "step") in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Claim limitations in this application that use the word "means" (or "step") are being interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word "means" (or "step") are not being interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.

Examiner Note:

1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation uses "means" (or "step") or otherwise invokes treatment under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, by using a substitute term for "means" that serves as a generic placeholder.

2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.

3. When a claim limitation is being interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph (i.e., it meets the three-prong test), to provide clarification the examiner may identify the structure, material, or act disclosed in the specification that supports the recited function by adding explanatory remarks after this paragraph.

4. When the presumptions raised are rebutted by the claim language, for example by not using "means" and failing to recite structure that performs the function, or by using "means" along with definite structure that performs the function, use form paragraph 7.30.06 and/or 7.30.07.

(a) Follow this form paragraph with form paragraph 7.30.06 when, despite the absence of the word "means," a claim limitation is interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

(b) Follow this form paragraph with form paragraph 7.30.07 when, despite the presence of the word "means," a claim limitation is not being interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

5. A claim limitation interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, that raises issues under 35 U.S.C. 112(a)  and/or 112(b)  or pre-AIA 35 U.S.C. 112, first and/or second paragraphs, respectively, should also be addressed, as appropriate. See MPEP § 2185.