¶ 7.34.23     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph: Claim Limitation is Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth paragraph, but Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Is Lacking, Insufficient, or Not Clearly Linked

Claim limitation "[1]" invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. [2] Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph.

Applicant may:

  • (a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph;
  • (b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or
  • (c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a) ).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

  • (a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a) ); or
  • (b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d)  and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1.  In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph.

2.  In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the entire claimed function or why there is no clear linkage between the structure, material, or acts and the function. For example, explain that (i) the disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification.

3.  This form paragraph must be preceded by form paragraphs 7.30.03.h, 7.30.03, and 7.30.05 (to set forth the claim interpretation and statutory basis for 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the indefiniteness rejection and identify the claim at issue) and 7.30.06, if appropriate (invoked despite the absence of means).

4. When a rejection is made under 35 U.S.C. 112(b)  or pre-AIA 35 U.S.C. 112, second paragraph, because the disclosure is inadequate to support the limitation interpreted under 35 U.S.C. 112(f)  or pre-AIA 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 112(a)  or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description should also be considered. See MPEP § 2181, subsection IV.