¶ 7.34.17 Rejections Under 35 U.S.C. 112, 2nd Paragraph, Unclear Whether Claim Limitation Is Invoking 35 U.S.C. 112, Sixth Paragraph, the Phrase "Means for" or "Step for" Is Not Used
Applicant asserts that the claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112, sixth paragraph, because [2]. If applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may:
(a) Amend the claim to include the phrase "means for" or "step for". The phrase "means for" or "step for" must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or
(b) Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite 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 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 is invoking 35 U.S.C. 112, sixth paragraph, even though the phrase "means for" or "step for" is not used in the claim limitation. 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, second paragraph.
3. In bracket 2, explain why it is unclear whether the claim limitation invokes 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 or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.
4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.