Configured to mpep. Throughout this section, reference is made to 35 U.

Configured to mpep. 07 (a) for guidance on when the second action may be made final. 2024] [Editor Note: This MPEP section is applicable regardless of whether an application is examined under the AIA or under pre-AIA law. Oct 30, 2024 · In accordance with MPEP § 2143, subsection I. MPEP § 2161. 112 (f) or pre-AIA 35 U. Throughout this section, reference is made to 35 U. 112(b); Examining Functional Claim Limitations: Focus on Computer/Software-related Claims; 35 U. 04 (d) for more information about evaluating whether a claim reciting a judicial exception is integrated into a practical application and MPEP § 2106. 112(f) (commonly called “means-plus-function” or “step-plus-function” limitations) and to reinforce the importance of properly interpreting such limitations and of making the record clear as to your interpretation. § 112, sixth paragraph. § 112. Sep 29, 2024 · MPEP 2111. This new section of the MPEP addressed the language “adapted to. Feb 5, 2020 · A patent specification is a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention. , the Supreme Court’s "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. CLS Bank Int'l, 573 U. 05 (g). 05: Specific Topics Related to Issues Under 35 U. An example would be “an overcurrent detection circuit configured to [or adapted to] detect overcurrent flowing in a switching element. For example, replace a “widget adapted to be connected to a device” to “widget connected to a device. 3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Jan 22, 2014 · By Dennis Crouch Chief Judge Rader recently argued that no patentable weight should be given to claim terms focusing on how a device is “configured to” perform a particular task. For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is "before the effective filing date of the claimed invention". Although examiners should be familiar with the recent training prior to participating in this workshop, pertinent resources are referenced herein so that examiners can obtain more information if needed. 05(g), 2181 and 2182, and the following training modules: Enhancing Clarity By Ensuring That Claims Are Definite Under 35 U. A Jul 28, 2022 · wherein the central portion is configured to surround a patient’s nose such that the mask is configured to deliver pressurized airflow to the patient’s airways by delivering pressurized airflow into at least the patient’s nostrils. To help answer some of those pleas, the U. v. According to MPEP 2111. 2024), published November 2024, is up-to-date as of January 31, 2024. Bausch & Lomb Inc Mar 15, 2013 · Claiming an apparatus in terms of what it does, referred to as “functional claim language,” rather than the structure of the apparatus itself, is a common and useful claim drafting technique. Accordingly, the Examiners might give such features limited patentable weight. Oct 30, 2024 · 2111. claims. Patent and Trademark Office for analyzing Section 101 patent subject matter eligibility issues. 03 | Next: §2111. There are two words conspicuously missing from the list: “processor” and “controller. Dec 17, 2024 · A solid understanding of how dependent claims can limit structure in relation to method claims is something all patent professions should understand, even quality assurance specialists at the USPTO. , a generic controller). Read for a discussion of patent specification best practices. 05 Aug 13, 2020 · Nevertheless, some examiners might actually prefer some “configured to” language and view it favorably and a helpful way to distinguish cited art. 112 (f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Next, patent practitioners should consider whether sufficient structure for such terms has been described in the specification and, where applicable, the drawings. 2 機能的表現の法律的な Apr 3, 2024 · What Foreign [And U. The Three Prong Test from MPEP 2181 for Identifying § 112(f) Claim Limitations Apply § 112(f) to a claim limitation if it meets the following 3-prong test: the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for Aug 10, 2019 · In claims, the terms “configured for,” “capable of,” and “adapted to,” are always followed by a functional element. Oct 26, 2018 · “Configured to” or “Capable of”: That Is the Question Alexander Ott McDermott Will & Schulte + Follow Contact MPEP 2111. According to MPEP § 2181, the test consists of the following prongs: The claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term May 15, 2014 · However, claims that recite such “configured to” or “adapted to” language have recently been construed by courts in a more limited manner similar to means-plus-function claim terms. The Special Case of Computer-Implemented Means-Plus-Function Limitations In the case of software patents, the claimed subject matter generally includes a series of computer-implemented steps, often invoking means-plus-function. 112, sixth paragraph. See also MPEP § 2173. ” Jan 29, 2024 · Nevertheless, patent attorneys now may encourage clients to use the language “ circuitry configured to … {function}” since the MPEP cites favorable case law for such an interpretation. See MPEP § 706. 05 (b) and MPEP § 2106. Nov 26, 2019 · The following claim was rejected by the USPTO examiner for mixing system and method: An online computer system comprising a processor configured to perform the steps of the method of claim 16. Sep 30, 2024 · The three-prong test is used to determine whether a claim limitation invokes 35 U. 112, Second Paragraph Previous: §2173. 05 (h) Jul 30, 2003 · 4. " Alice Corp. 04: “The determination of whether each of these clauses is a limitation in a… Read More Aug 7, 2017 · Fortunately for patent practitioners, MPEP § 2181 (I) (A) provides a list of words that the Federal Circuit has found to not invoke § 112 (f). C. But there is another concept embraced by the term “functional claiming” – it also refers to claiming an Sep 30, 2024 · MPEP 2111. 01, subsection I and MPEP § 2163 contain additional information on determining whether there is adequate written description support for computer-implemented functional claim limitations. The first factor is the nature of the invention. Mar 19, 2009 · However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U. 04 does not explicitly address the phrase “configured to” in patent claims. If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art May 7, 2024 · However, a second approach an examiner might consider is to focus on intended use. はじめに MPEP 2114には、「プロダクトの特徴は構成的にあるいは機能的に記載し得るが、プロダクトに係るクレームは、先行技術と構成上の差異(機能上の差異ではない)が明確になるように記載されなければならない。たとえば、装置クレームの場合は、何が装置であるのかをカバーするので Oct 24, 2023 · We often encourage our clients to use the language “circuitry configured to … {insert function}” because the MPEP cites case law that says “circuity” or “circuitry” combined with a specified function is sufficient structure to avoid invoking 35 USC § 112 (f). The MPEP states: Mar 22, 2024 · The memo reminds examiners to apply the 3-prong analysis outlined in MPEP 2181, subsection I to determine if a claim limitation invokes 112 (f): (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having Revision Date Indicator. § 112 (f), which are commonly referred to as “means-plus-function” or “step-plus-function” limitations. In an effort to increase consistency, the USPTO issued its Section 101 Guidance. Ex Parte Sep 18, 2024 · Struggling with drafting patent claims involving controllers? Find some example formats and best practices to ensure robust protection and avoid pitfalls in this latest blog post. 5. ” See Crouch, What Does it Mean for a Device to be “Configured To” Perform a Particular Function, Patently-O (2014). There are a few recent cases that illustrate problems with using functional language to define the capabilities of structure in U. The claim elements under 35 U. Nov 21, 2024 · Phrases such as “configured to,” “adapted to,” or “operable to,” have been used. ” This suggests that examiners should evaluate “configured to” phrases on a case-by-case basis, considering whether they impart a structural limitation or merely state an intended use. . 112(f): Broadest Reasonable Interpretation and Definiteness of Mar 10, 2017 · For example, if the language was changed to "the device is configured to perform the function of…," the Examiner will almost always accept it, even though, in my mind, the meaning is identical. (3), a proper rejection based on the rationale that the claimed invention is a combination of prior art elements also includes a finding that results flowing from the combination would have been predictable to a person of ordinary skill in the art. If you search the MPEP for "amazon" you should easily find the justification that it is improper under 112 to claim method in a product claim. The way the functional language is recited, however, can determine whether the claim covers any device capable of performing the function, or only devices designed or made to perform the function. 01 Plain Meaning [R-01. 05 (f) | Next: §2173. Cir. This section discusses supporting a rejection under 35 U. Refresher training on this topic is available, as For more information, refer to MPEP 2173. 111; Double Patenting 900 Oct 22, 2019 · 1 Does a system claim which state tangible items, for example "processor configured to" help satisfy the "practical application" aspect of the new guidelines which were released in January 2019? I am also looking for any definitions in MPEP which define a method claim as well as a system claim. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility. A. However, at least for now, there is support in the MPEP to avoid some of these 112 (f)/112 (b) and/or 112 (f)/112 (a) problems by claiming “a circuit configured to…” or “circuitry configured to…”. Jan 28, 2016 · Terms that precede “configured to,” “adapted to,” or present participles (“ing” words) may be candidates for functional interpreation. 2024]. §112 (f) are thus referred to as “means-plus-function” limitations. Apr 17, 2018 · A three-part test for identifying a means-plus-function limitation is set forth in MPEP §2181 (I): the claim limitation uses the term “means,” “step,” or other term that is a generic What are solutions to intended use claim rejections? One potential solution is to claim the feature more positively by replacing “adapted” or “configured” with language that gets to the heart of the matter. § 112(f) Apr 17, 2018 · See MPEP §2181 (II) (A). Each section within an MPEP Chapter includes a revision date indicator, e. However, the guidance provided for “adapted to” can be applied to understand the difference: MPEP 2111. 1. Hewlett–Packard Co. “Configured to” requires that the processor be capable of performing the matching without further modification. Aug 21, 2025 · Learn how MPEP intended use affects patent claims, the distinction from functional limitations, and strategies for overcoming examiner rejections. e. 04 does not explicitly differentiate between “adapted to” and “capable of” in patent claims. ADAPTED TO V. Here, I have updated the data to also add information regarding claims that include the term “means” (the traditional primary trigger Sep 29, 2024 · This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements. 1 The USPTO incorporated previous guidances concerning Section 101 into Section 2106 of the Manual of Patent Examining Procedure (MPEP), which includes the following flow chart: MPEP § 2106. Using “configured to” language in claims. Jan 7, 2019 · Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc Williamson v. 01. Sep 29, 2024 · A What is the difference between ‘capable of’ and ‘configured to’ in patent claims? In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications: “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed… Oct 30, 2024 · Features of an apparatus may be recited either structurally or functionally. 2143. As described in MPEP § 2106, subsection III, Step 2B of the Office’s eligibility analysis is the second part of the Alice /Mayo test, i. 04. 05 (g) Functional Limitations Ninth Edition of the MPEP, Revision 01. Ltd. Sep 30, 2024 · MPEP 2111. 1997). May 3, 2024 · the term “means” or “step” or the generic placeholder is modified by functional language and linked by a transition word such as “for,” “configured to,” or “so that”; and the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. 208 特許翻訳（特に英訳）をしていると、「『～するための手段』みたいな機能的記載に気をつけろ」という話を聞くと思います。今日は、機能的記載(means plus function=MPF)に出会ったときに特許翻訳者ができることについて、改めて考えてみたいと思います。 （1）「機能的記載(means plus function=MPF We would like to show you a description here but the site won’t allow us. 03 All Claim Limitations Must Be Considered [R-01. The examiner argued that the underlined feature was not supported by the specification. The Chief writes: A system claim generally covers what the system is, not what the system does. According to MPEP § 2181, claim limitations invoking 35 U. 01 Suggestion or Motivation To Modify the References [R-01. 112, sixth paragraph, “means or step plus function” limitations in a claim. The use of Functional Claim Language in view of recent court decisions and the January 2018 update to the MPEP CONFIGURED TO V. 04 "Adapted to," "Adapted for," "Wherein," "Whereby," and Contingent Clauses Ninth Edition of the MPEP, Revision 01. See Superior Industries v. Specialist advice should be sought about your specific circumstances. 2024, Last Revised in November 2024 MPEP Chapter Index Chapter 2100: Patentability 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention 2173. In the way it's written in your OP, there's a double inclusion issue. However, claims that recite such “configured to” or “adapted to” language have recently been construed by courts in a more limited manner similar to means-plus-function claim terms. The premise for this is that there is more than one way to See MPEP § 2106. The specification should disclose how to configure a computer to possess the requisite functionality or how to integrate the programmed computer with other elements of the invention, unless a skilled artisan would know how to do so without such disclosure. 2024, Last Revised in November 2024 MPEP Chapter Index Chapter 2100: Patentability 2111: Claim Interpretation; Broadest Reasonable Interpretation Previous: §2111. The numbers within the bracket indicate the date the revision cycle for that section was completed, which would be January 2024 in the example above. , [R-01. 112 (f), however the guidance is equally applicable to pre-AIA 35 U. Rather than construct a blanket approach, I suggest a fact-based approach based on a variety of factors. Is the invention software, non-software electrical or electronic, or mechanical? Oct 30, 2024 · This section sets forth guidelines for the examination of 35 U. Note that the publication date of the Manual as indicated on the title page and on the bottom of the PDF renderings may be later Oct 30, 2024 · When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule. ” The interpretation generally depends on the specific context and structure of the claim. 米国式特許クレームにおける“adapted”, ”operable”, ”configured”について、Faber on Mechanics of Patent Claim Draftingは次のように解説している。 「MPEP §211 Jan 31, 2024 · The current MPEP (9th Edition, Rev. In general, the Board construes functional elements that use the phrase “capable of” in exactly the same way that the Board construes functional elements that use the phrase, “adapted to” or “configured for. In re Gulack, 703 F. May 7, 2014 · Functional language is often employed in claims in order to obtain a broader claim than one that recites purely structural limitations. MPEP 2111. Jan 23, 2014 · By Dennis Crouch In a prior post, I included a chart showing a recent rise in the use of the functional claim phrase “configured to. This form paragraph may also be used in response to an applicant's reply in which applicant disputes the application of 35 U. 103 by reliance on scientific theory and legal precedent. Any changes to USPTO patent examining policies and procedures that occurred after January 31, 2024, have not been incorporated into the current MPEP. Examiners must consider all claim limitations when determining patentability of an invention over the prior art. 2024] "All words in a claim must be considered in judging the patentability of that claim against the prior art. As explained in the MPEP, a claim containing a recitation of the manner in which an apparatus is intended to be employed does not differentiate the claimed apparatus from prior art if the prior art has the same structure (e. Under 35 In August of 2005, the PTO revised the MPEP to include a new section 2111. 04: “The determination of whether each of these clauses is a limitation in a… Read More FUNCTIONAL CLAIMING AND FUNCTIONAL DISCLOSURE Mention “functional claiming” to your neighborhood patent attorney and he or she might assume that you are referring to claims drafted using the means-plus-function claiming paradigm set forth in 35 U. ” But an important follow-on question is, will such language be given patentable weight? “Configured to” requires that the processor be capable of performing the matching without further modification. ” While the new section of the MPEP cited case law for other phrases, such as “whereby” clauses, no legal support was cited in regard to the “adapted to” language. “Configured to” implies that the structure is specifically designed or arranged MPEP 2111. Therefore, it limits the processor to structures that perform the matching of biometric input in either pre-configured hardware or a combination of hardware programmed with software to perform the function. CLAIMS 1. Oct 31, 2018 · "Configured to" or "Capable of": That Is the Question The content of this article is intended to provide a general guide to the subject matter. 112 (b) or Pre-AIA 35 U. In keeping with the flexible approach to obviousness under KSR, as well as the requirement for explanation, Office personnel may invoke legal precedent as a A system configured the perform the method of claim 1, wherein the system comprises the component A, the component B, and the component C. Pty. This example is taken from Appendix 1 to the October 2019 Update: Subject Matter Eligibility Life Sciences & Data Processing Examples to the 2019 Revised Patent Subject Matter Eligibility Guidance MPEP 2173. Masaba (Fed. A three-part test for identifying a means-plus-function limitation is set forth in MPEP §2181 (I): the claim limitation uses the term “means,” “step,” or other term that is a generic placeholder for performing the claimed function; It should also be rejected under 112 for being indefinite as it is a product claim with a positively recited method (i. " In re Wilson, 424 F. 04: “The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. ” Sep 30, 2024 · According to MPEP 2111. Citrix decision in 2015. In re Schreiber, 128 F. Jul 9, 2021 · こうした事情を踏まえて、"configured to"という表現が プロセキューション において採用されるようになった。 これにより、特許権者の電子機器は、その作用を電源オン・オフにかかわらず行うように「構成されている」、という主張が可能となった。 Jan 7, 2019 · Id. , not a functional "configured to perform"). CAPABLE OF New Subject Matter Eligibility approaches available to patent practitioners in view Sep 29, 2024 · MPEP 2111. 04 states: “The court noted that an intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in 2143. 05 (c) for more information about how the machine-or-transformation test fits into the Alice/Mayo two-part framework. Note: This answer key includes answers to the questions on the worksheet, as well as additional explanations drawn from the MPEP and recent training. The purpose of this memorandum is to remind examiners of the resources available when examining limitations under 35 U. This misconception leads to unnecessary rejections, so perhaps it is worth addressing in detail. MPEP 2173. ] Patent Practitioners Need To Know About Means-Plus-Function Claim Interpretation In the U. Jun 7, 2021 · There are claim scope differences between “configured to” and “capable of” at the USPTO. ” Jan 7, 2019 · Whether the USPTO will amend the MPEP to conveniently exclude such favorable examples is unclear. – Understanding 35 U. ” Apr 23, 2019 · The following list identifies some of the most common mistakes in drafting patent applications. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7 MPEP 2181(I) sets forth a 3-prong analysis for applying § 112(f) when: the claim limitation uses the term “means” or a term as a substitute for “means” that is generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; Oct 10, 2020 · Claim limitations invoking 35 U. Eight years and six revisions of the MPEP later, no legal support has yet been 尚、機能的表現に「configured to~」(~するように構成される)を付ければ機能的表現ではなくなると考えている人もいるようだが、そのようなことはない。「configured to~」を付けようがそれ以下に装置がいかに作動するかに関する表現がある限り、機能的表現と見なされる。 1. 2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Chemical and mathematical formulas must be configured to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning. g. 05 (g) discusses functional language, and explains that a claim term is functional when it recites a feature “by what it does rather than by what it is. For applications subject to Jan 7, 2019 · Whether the USPTO will amend the MPEP to conveniently exclude such favorable examples is unclear. MPEP § 2143, subsection I. (3). Unfortunately, a recent appeal case illustrates that some still struggle with this concept. Jul 12, 2020 · MPEP 2114 II. 2d 1381, 1385, 217 USPQ 401 Sep 29, 2024 · In patent claims, particularly for apparatus claims, the phrases “capable of” and “configured to” can have different implications: “Capable of” generally refers to an inherent ability or potential of the structure to perform a function, even if it’s not specifically designed for that purpose. A detailed discussion about claim limitations that have "no patentable weight," including links to relevant Federal Circuit and Supreme Court decisions. Is it time to rethink the practice of claiming "circuitry operable" to perform a certain function? Is there a difference if the circuitry were "configured to" perform that function? Mar 29, 2024 · On March 18, 2024, the USPTO issued a memorandum to its Examiners reminding them of the resources and proper analysis for interpreting limitations under 35 U. 2014) (concurring opinion). Oct 25, 2025 · 800 Restriction in Applications Filed Under 35 U. 04: “The determination of whether each of these clauses is a limitation in a… Read More USPTO’s 3-prong Test for Means Claims Following MPEP 2181(I), a claim limitation should be interpreted according to 112(f) if it meets the following 3-prong analysis: Section 101 Examples Example 45: Controller for Injection Mold This is an example provided by the U. S. However, it is often treated similarly to “adapted to” or “adapted for. 02, 2173. 112 (f) or pre-AIA section 112, sixth paragraph would be interpreted as: system configured to extract a first pixel value; and system configured to compare the first pixel value to a pixel threshold to filter pixel values that exceed the threshold value. mhhh ycq caez c8l870 5nwo ro3 ndy6 uzb0x2 3jy qfh0r