Functional Language that invokes 112 Sixth Paragraph
When a claim uses the term “means” to describe a limitation, a
presumption exists that the inventors used the term to invoke 35 U.S.C.§ 112, sixth paragraph. However, the presumption can be rebutted when the same claim recites sufficient structure to perform the claimed function in its entirety.
“Means” is not the only term that may invoke 35 U.S.C.§ 112, sixth paragraph. A claim limitation that uses a non-structural term that is “simply a nonce word or a verbal construct that is not recognized as the name of structure” but is merely a substitute for the term “means for” associated with functional language can invoke this section of 112.
The following is a list of non-structural terms that may invoke 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for,” or “system for.”
If 112, paragraph 6 is invoked, the specification must set forth an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the claims will be rejected as indefinite under the second paragraph of section 112.
For a computer-implemented claim limitation interpreted under § 112,sixth paragraph, the corresponding structure must include the algorithm needed to transform the general purpose computer or processor disclosed in the specification into the special purpose computer programmed to perform the algorithm.
NUTSHELL: Avoid non-structural terms that invoke 35 USC 112, paragraph 6 and be sure to include an algorithm in the discussion for computer-implemented claim limitations.