706.03(e) Form Paragraphs for Use Relating to 35 U.S.C. 112, Sixth Paragraph [R-9]
Form paragraphs 7.34.20 and 7.34.21 should be used when a claim limitation invokes 35 U.S.C. 112, sixth paragraph. See MPEP § 2181. For rejections under 35 U.S.C. 112, second paragraph relating to 35 U.S.C. 112, sixth paragraph, use form paragraphs 7.34.16 to 7.34.19, reproduced in MPEP § 706.03(d).
¶ 7.34.20 The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph
Claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.
Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform 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
(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
Examiner Note:
In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.
¶ 7.34.21 Claim Limitation Interpreted under 35 U.S.C. 112, Sixth Paragraph
Claim limitation "[1]" has been interpreted under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term "[2]" coupled with functional language "[3]" without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier. [4].
Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim [5] interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation: [6].
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112, sixth paragraph.
For more information, see Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Examiner Note:
1. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112, sixth paragraph.
2. In bracket 2, recite the non-structural term that is merely a substitute for the term "means for."
3. In bracket 3, recite the functional language.
4. In bracket 4, provide an explanation, if appropriate, why the non-structural term is not recognized as the name of a structure but is merely a substitute for the term "means for."
5. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.
6. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.