Unless you have been a hiding under a patent prosecution rock of late, you know that patent examiners are hyper-focused on Section 112(f). Many have been aggressive in their application of the statute to claim elements, due in no small part to the USPTO’s new guidelines in January and extensive examiner training efforts.

The USPTO even has a nice paragraph that examiners are using to summarize the applicant’s options for responding:

1. amend the claim to avoid it being interpreted under 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or

2. present a sufficient showing that the claim limitations recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 112(f).

Of course, this applies only if the Office presents a prima facia case in the first place.

But what can be somewhat frustrating about the Office’s aggressive use of 112(f) is that beyond this introductory paragraph to the Office action, the examiners completely forget about their own interpretation when analyzing the claim elements under other sections of 112 as well as 102/103. This is particularly true when examiners attempt to stretch claim terms’ meanings under the broadest reasonable interpretation (BRI) to cover the prior art or to create ambiguity.

As noted in MPEP 2181:

Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. … The Court of Appeals for the Federal Circuit, in its en banc decision In reDonaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994), held that a “means-or-step-plus-function” limitation should be interpreted as follows:

Per our holding, the “broadest reasonable interpretation” that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.

Therefore, the broadest reasonable interpretation of a claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act. As a result, section 112(f) or pre-AIA section 112, sixth paragraph, limitations will, in some cases, be afforded a more narrow interpretation than a limitation that is not crafted in “means plus function” format.

Consider a couple examples that occur with relative frequency.

If an examiner interprets a claim element under 112(f) but then alleges that the element is unclear/indefinite without fully considering the structure disclosed in the specification, then the examiner has not actually considered the proper claim interpretation. One cannot allege that the claim scope is limited to the structure in the specification (and its equivalents) while also alleging the the claim wording is unclear in the abstract without actually looking to the structure in the specification.

Likewise, if an examiner interprets a claim element under 112(f) but then alleges that the element is broadly shown by prior art showing different structure that is not equivalent to the structure in the specification, or without fully considering the structure disclosed in the specification and its equivalents, then again the examiner has not properly examined the claims.

Examiners cannot use BRI to cover up missing structure from the structure they just said was that which corresponded to the alleged means element in the claim.

Note, the applicant does not have to necessarily acquiesce to the means interpretation to use these arguments. The point is that if the Office wants to allege certain elements fall under 112(f), then it must be consistent in examining the claim elements in that way throughout the entire action.

Of course, the applicant must be careful if there is a lack of structure disclosed in the specification as that can be fatal to the application if the means interpretation is confirmed.

So, if examiners are going to aggressively assert 112(f) interpretations, take advantage of situations where the examiner does not carry that interpretation through to the entire action as it can provide the applicant with strong arguments as to defects in the rejection. At the same time, be careful to push back against overly-limiting 112(f) interpretations that would render claim scope unacceptably narrow.