As we discussed last time, subject matter eligibility was not the only patentability requirement for which the United States Patent and Trademark Office (USPTO) issued new guidance on January 7, 2019, although the initial press coverage might have made it seem that way. The second examination guidance document, “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” has received significantly less coverage or attention than the Subject Matter Guidance, but may in fact portend a coming wave of rejections under 35 U.S.C. 112 for computer-implemented inventions.
The Functional Claiming Guidance opens with an observation that the Federal Circuit has recognized problems with broad functional claiming without adequate structural support in the specification, which has resulted in a “proliferation of functional claiming untethered to [112(f)] and free of the strictures set forth in the statute.” Other pessimistic quotes from Federal Circuit opinions and concurrences as to the state of functional claiming follow, both with respect to functional claiming in a 112(f) context and in a 101 context. Perhaps the most ominous citation is to Judge Meyer’s concurrence in Intellectual Ventures I LLC v. Symantec Corp., which begins its discussion on software patents with an admonition that “most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents,” and goes downhill from there.
With the mood set, the Functional Claiming Guidance focuses first on claim interpretation under 35 U.S.C 112(f) and compliance with the definiteness requirement of 35 U.S.C. 112(b). Recognizing that there is a presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term “means,” the Functional Claiming Guidance also notes that the presumption is overcome (i.e. 35 U.S.C. 112(f) does apply) when “the claim term fails to recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.” Moreover, other terms in addition to the most common “means,” can also act as a “generic placeholder” if the term is not recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed limitation; a non-exhaustive list of such terms includes “module,” “unit,” or “element.”
To determine whether a word, term, or phrase coupled with a function denotes structure, the Functional Claiming Guidance instructs examiners to check whether (1) the specification provides a description sufficient to inform one of ordinary skill in the art that a term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art recognized structure to perform the claimed function. If a limitation does invoke 35 U.S.C. 112(f), then the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). Such an algorithm may be expressed in “any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” However, an Applicant cannot argue that one of ordinary skill in the art is capable of writing software to provide a missing algorithm. Nor can a partial algorithm, or algorithms of only some functions suffice – the entirety of the claimed functionality must be described algorithmically in the specification or figures. Furthermore, when a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a).
The Functional Claiming Guidance also addresses separately the requirements of 35 U.S.C. 112(a) for computer-implemented functional claims, even for claims that do not invoke 35 U.S.C. 112(f). For instance, in order to satisfy the written description requirement, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve. For the written description requirement, “the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software.” Examiners are instructed to determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing, and if not, make a rejection under 35 U.S.C. 112(a) for lack of written description. Finally, with respect to the enablement requirement under 35 U.S.C. 112(a), the Functional Claiming Guidance reminds examiners that, although not everything necessary to practice the invention need be disclosed, a claim is sufficiently enabled only if no undue experimentation is needed across the entire scope of the claims, and explicitly notes that an applicant cannot rely on the knowledge of one skilled in the art to supply missing information required to enable the novel aspect of the claimed invention, since that information is, by definition, not known in the art.
In theory, the USPTO is not engaging in new rulemaking with these guidance documents – they are merely synthesizing and extracting current case law in a way that is understandable to the largely-non-legal examining corps. However, one way to take these two guidance documents (and presumably the internal training to examiners), and read between the lines sees the USPTO looking to reduce the number of rejections under 35 U.S.C. 101, while also addressing the apparent concern on the Federal Circuit as to software patents and computer-implemented inventions by increasing rejections under 35 U.S.C. 112. By way of analogy, consider how professional and collegiate athletic leagues and conferences ask referees to make certain rules “points of emphasis” for a season to cut down on excessive unwanted conduct. The rule was always in the rulebook, but by encouraging more rigid enforcement of the rule, the league or conference can promote more desired play. Perhaps these two guidance documents reflect the USPTO’s own “points of emphasis” for 2019.
Let’s look at an example of how the two guidance documents may act in operation. Consider a simple claim of “An apparatus comprising a processor, and memory storing computer-readable instructions that, when executed by the processor, cause the processor to a) retrieve information from a remote database over a network connection, and b) store a copy of the information in a local cache within the memory.” This claim likely satisfies the Subject Matter Guidance, in that under Prong One, it does not “recite” an abstract idea within one of the enumerated groupings, and in any event, likely satisfies Prong Two by integrating any abstract idea recited therein within a practical application. Recall that Prong Two does not include an evaluation of whether an additional element is well-understood, routine, or conventional, and the Subject Matter Guidance explicitly reminds examiners that a claim that includes conventional elements may still integrate an exception into a practical application, thereby satisfying the subject matter eligibility requirement of Section 101.
Does this example claim satisfy 35 USC 112, however? The example claim does not include any of the identified “generic placeholders,” but does recite a common setup of a “processor and memory.” To my knowledge, the Federal Circuit has not ruled on whether the processor/memory recitation recites “sufficiently defined” structure. Although it would seem the answer is “yes” under the 3-prong test (i.e., whether (1) the specification provides a description that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art recognized structure to perform the claimed function), in that most specifications include at least a pro forma discussion of common processor and memory modalities, I could see a fact-specific scenario in which the terms may be viewed by a Federal Circuit panel as lacking “sufficiently defined” structure, especially when considering the wide breadth of such modalities (e.g., the term “processor” includes microprocessors such as the Intel 4004 and 8008 of yesteryear, modern multi-core processors, and everything in between).
Even if the “processor and memory” is never found by a court to invoke 35 U.S.C. 112(f) (or is affirmatively found to recite sufficiently defined structure), the Functional Claiming Guidance suggests that a new emphasis will be made as to whether the specification discloses the computer and the algorithm(s) that achieve the functions of claims in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. Therefore, it may serve applicants well to include increased explanation and inclusion of algorithms, especially for novel and inventive aspects. For example, if the applicant of the example claim felt that the retrieving operation was inventive, she should recite in detail how the retrieving is performed algorithmically (e.g., “opening a connection to the remote database, preparing an instruction command, transmitting the instruction command over the opened connection. . . .”). She would also be served well by providing details on the local “storing” operation to ensure that the apparatus may be made and/or used without undue experimentation. For example, she may describe that a connection to the local cache may be opened prior to the connection to the remote database, that the information is received in full prior to instantiation of the storing operation, or so on. Of course, inventions of greater complexity will require a more thoughtful analysis as to what needs to be included in the specification, and to what degree of detail, so as to support the claims fully, regardless as to whether 112(f) is invoked.
In January, my colleague John Whetzel, discussed the importance of explaining the “why,” in making sure that claims are underpinned with a solid technical understanding of the invention, the technical environment, and the nexus therebetween. These new guidance documents make clear the importance that the “how” of the invention needs to be distilled into the application, in perhaps even greater detail than previously thought. We welcome any questions you have on these patent guidance documents, and whether they affect your patent strategy.
 “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112,” 84 Fed. Reg. 57 (January 7, 2019) (herein, “Functional Claiming Guidance”).
 84 Fed. Reg. 57, at 57 (discussing and quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc).
 84 Fed. Reg. 57, at 57-58.
 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J., concurring)
 84 Fed. Reg. 57, at 58.
 Id. at 59.
 Id. at 59.
 Id. at 59-60.
 Id. at 60.
 Id. at 60.
 84 Fed. Reg. 57, at 61.
 Id. at 62.
 Helin, K. “What NBA officials will focus on this season: Off-ball clutching/grabbing, traveling, respect for game.” Yahoo! Sports, Sept. 28, 2018, available at https://sports.yahoo.com/nba-officials-focus-season-off-010057593.html.
 See Subject Matter Guidance.