Wednesday, February 9, 2011

Patent Claims Guidelines

[Federal Register: February 9, 2011 (Volume 76, Number 27)]
[Notices][Page 7162-7175]
From the Federal Register Online via GPO Access []
Patent and Trademark Office
[Docket No.: PTO-P-2010-0088]

Supplementary Examination Guidelines for Determining Compliance
With 35 U.S.C. 112 and for Treatment of Related Issues in Patent

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: These supplementary guidelines are intended to assist United States Patent and Trademark Office (Office) personnel in the examination of claims in patent applications for compliance with 35 U.S.C. 112, second paragraph, which requires that claims particularly point out and distinctly claim the subject matter that applicant regards as his or her invention. In addition, supplemental information is provided to assist Office personnel in the examination of claims that contain functional language for compliance with 35 U.S.C. 112, especially computer-implemented invention claims...

For an idea of what is in the notice, here is a partial excerpt from Step 1.
II. Step 1--Interpreting the Claims

A. Broadest Reasonable Interpretation: The first step to examining a claim to determine if the language is definite is to fully understand the subject matter of the invention disclosed in the application and to ascertain the boundaries of that subject matter encompassed by the claim. During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. Because the applicant has the opportunity to amend claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.\1\ The focus of the inquiry regarding the meaning of a claim should be what would be reasonable from the perspective of one of ordinary skill in the art.\2\ See MPEP Sec. 2111 for a full discussion of broadest reasonable interpretation. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification--the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.\3\ When the specification sets a clear path to the claim language, the scope of the claims is more easily determined and the public notice function of the claims is best served. See MPEP Sec. 2111.01 for a full discussion of the plain meaning of claim language.

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