The PTO really dislikes functional language
On Feb. 9, 2011, the issued new PTO guidelines (Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112) stating that a limitation will be interpreted as means plus function if the claim uses a non-structural term not recognized as the name of a structure and is merely a substitute for the term “means for” associated with functional language. One example given of such non-structural terms in the PTO guidelines include “unit for”.
Recently the PTO has begun harshly enforcing these guidelines. Particularly, the PTO is often requesting applicants to explicitly state that a claim which uses any functional language is not a 112(f) claim even when it is clear that the claim is not. If no structure is described in the specification to support the new language, the applicant may be in trouble.
Some foreign based device applications only include block diagrams which generically refer to different portions as a unit.
Everyone knows that these block elements are implemented by one or more processors/microcontrollers/controllers running a program stored in memory or logic. However, the PTO may take the position that the limitation is new matter if such a processor is not explicitly stated in the specification.
Applicants should take care to make sure that the specification explicitly includes at the least language stating that the block portions can be implemented by a processor configured to run instructions in an associated memory.
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