DETAILED ACTION
Status of Submission
Applicant’s response filed on February 9, 2026 has been entered.
Claims Subject to Examination
Claims 1-20 of this application are subject to examination.
Objection to Amendment
The substitute specification filed on February 9, 2026 is objected to because: in ¶ 0041, at l. 3, “a first end 71 if the timing lever 70” should read “a first end 71 of the timing lever 70”.
Claim Construction
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Do the claims invoke 35 U.S.C. 112(f)?
I.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Egenara, Inc. v. Cisco Systems, Inc.
Altiris Inc. v. Symantec Corp.
Ex Parte Smith (informative)
Ex parte Erol (informative)
Ex parte Marc E. Davis et al. (instructive)
I.B. Do apparatus claims 1-14 and method claims 15-20 recite computer-implemented functional claim limitations?
Independent apparatus claim 1 requires “a controller configured to receive the vibration data and process the vibration data to detect presence or absence of a vibration component within the vibration data that occurs when the fifth wheel properly couples to the king pin”. Independent apparatus claim 8 requires “a controller configured to receive the vibration data and process the vibration data to detect presence or absence of a vibration component that occurs when the fifth wheel properly couples to the king pin”. Independent method claim 15 requires “processing the vibration data to detect presence or absence of a vibration component within the vibration data that occurs when the fifth wheel properly couples to the king pin”.
Thus, claims 1 and 8 require a “controller” that performs a data processing function, and claim 15 requires a data processing function that is performed by the disclosed controller. Since claims 1-20 recite functional claim limitations, it must be determined whether such limitations are implemented by a computer(s).
Applicant’s disclosure refers to a controller 222 that (i) receives user input of a predetermined vibration component or learns the predetermined vibration component based on repeated coupling events, (ii) receives vibration data output or generated by a vibration sensor 234, (iii) processes the vibration data from the sensor to detect a presence or an absence of the predetermined vibration component within the vibration data from the sensor by comparing a sensed vibration component to the predetermined vibration component, and (iv) controls an indicator 228 to indicate the coupling status to the operator. In one preferred embodiment, the controller 222 is disclosed as processing the vibration data using spectral analysis, such as a Fast Fourier Transform (FFT), to transform the vibration data to the frequency domain, thereby determining/generating spectral data having a spectral signature exhibiting threshold amplitudes at certain frequencies or frequency ranges, and then further processing the spectral data to thereby identify different components thereof which may be compared to components of the predetermined spectral signature. In exemplary embodiments, the controller 222 is disclosed as (i) processing the spectral data to identify the highest amplitude spectral component(s) and then comparing those dominant frequencies to the spectral component(s) of the predetermined spectral signature, or (ii) processing the spectral data to identify the maximum amplitude and then comparing the maximum amplitude to the maximum amplitude defined by a predetermined spectral signature, or (iii) identifying at least one dominant frequency component in the spectral data that corresponds to the vibration data and then comparing the identified dominant frequency component to a predetermined dominant frequency in the predetermined spectral signature.
The controller 222 is further disclosed as having conventional computer components including (i) a memory 226 that stores data including the predetermined vibration component, (ii) a processor 224 that retrieves data from the memory 226 and performs the controller’s processing functions, (iii) a timer (or clock) 239, (iv) an output device in the form of the indicator 228, and (v) an operator input device.
For these reasons, a person of ordinary skill in the art (POSITA) would recognize from applicant’s disclosure that the controller 222 is a computer-implemented controller that is specially configured (i.e., programmed via special-purpose algorithms) to perform the claimed functions.
I.C. Do computer-implemented apparatus claims 1-14 and computer-implemented method claims 15-20 invoke 35 U.S.C. 112(f), i.e., do these claims (i) define the invention in terms of functions to be performed, but (ii) fail to recite sufficient structure for performing all of the claimed functions?
Claims 1-14 require that the claimed controller performs the computer-implemented data processing functions identified above. Further, claims 15-20 require that the claimed method includes the execution of a computer-implemented data processing function that is performed by the disclosed controller. Since claims 1-20 define the invention in terms of functions to be performed, the question becomes whether these claims recite sufficient structure for performing all of the claimed functions.
Claims 1-14 do not define the claimed controller as having specific structure or a specific arrangement of structural components. These claims fail to provide POSITA with an understanding of the structural elements/arrangements necessary to carry out the claimed computer-implemented data processing function. Further, claims 15-20 fail to recite any structure for performing the computer-implemented data processing function.
Further, as explained above, applicant’s controller is not disclosed as having specific structure or a specific arrangement of structural components. Rather, applicant’s specification only describes it as having generic computer components. Thus, applicant’s disclosure does not support a finding that the claimed controller constitutes sufficient structure for performing all of the claimed functions.
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that:
An ordinary, off-the-shelf computer system is structure. Thus, in reciting a general-purpose, computer-implemented “controller”, claims 1-14 recite some structure for performing the claimed functions. The question is whether this structure is sufficient for performing all of the claimed functions.
The hardware components of a computer system are old and well known.
Based upon the special computer-implemented data processing function required by claims 1-14, and based upon the description provided by applicant’s disclosure, the claimed controller is necessarily implemented using a computer system having a particular configuration.1 That is, a general-purpose computer system must be specially equipped, i.e., provided with special programming, in order to transform it into a special-purpose computer system for performing the specific functions and achieving the intended outcomes described in applicant’s disclosure and recited in the claims.
Based on the above findings, applicant’s claimed invention is not only a computer-implemented invention, but primarily a software-implemented invention. That is, the distinctive features of the invention arise from the special programming instructions that are necessarily required to be executed by a special-purpose computer processor in order to implement the claimed computer-implemented invention and perform the special functions required by the claims.
Accordingly, a general-purpose computer-implemented “controller”, as recited generically in claims 1-14, does not constitute sufficient structure for performing all of the claimed functions since it lacks the special programming required.
Conclusion: Computer-implemented apparatus claims 1-14 and computer-implemented method claims 15-20 invoke 35 U.S.C. 112(f) because:
(i) Claims 1-20 define the invention in terms of functions to be performed.
(ii) Claims 1-14 fail to recite sufficient structure for performing all of the claimed functions because the claimed “controller” (i.e., a general-purpose computer system that lacks special programming) is not capable of performing all of the claimed functions.
(iii) Claims 15-20 fail to recite sufficient structure for performing all of the claimed functions because no structure is recited for performing the claimed computer-implemented data processing function.
For claims that invoke 35 U.S.C. 112(f), does the specification disclose adequate corresponding structure to perform all of the claimed functions?
II.A. Authorities Relied Upon
See the discussion of the following decisions in the APPENDIX:
Williamson v. Citrix Online, LLC
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology
Ex Parte Smith
Ex parte Erol
II.B. For computer-implemented apparatus claims 1-14 and computer-implemented method claims 15-20, does the specification disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform all of the claimed functions?
Based upon a review of the applicant’s original disclosure, the examiner finds that the closest structure disclosed as corresponding to the claimed controller is the controller 222, which is described as having conventional computer components including a memory 226, a processor 224, a timer (clock), an output device in the form of an indicator 228, and an operator input device.
In the case of computer-implemented inventions that rely upon special software (special programming) to execute the claimed functions, the structure disclosed in the specification must be more than a general-purpose computer system. Rather, the “corresponding structure” is an algorithm(s) for performing the claimed functions. The algorithm(s) may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure. Regardless of the manner in which it is expressed, the algorithm(s), by definition, must constitute a finite sequence of specific logic steps for performing a particular task.
There is a distinction between language that simply describes the function to be performed and the required disclosure of an algorithm(s) by which it is performed. In other words, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of a specific algorithm(s) that describes how the claimed function(s) is performed.
Further, it is not sufficient for the applicant to simply state or later argue that POSITA could theoretically write the necessary algorithm(s) and/or would know what software to employ to accomplish the claimed function(s), i.e., to show that the enablement requirement of 35 U.S.C. 112(a) is met. The inquiry is whether one skilled in the art would understand the patent specification itself to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithm(s) used by applicant for performing the claimed function(s).
Based upon his review of applicant’s disclosure, and in consideration of the state of the computer-implemented control system art at the time of applicant’s invention, the examiner finds that the computer-implemented data processing functions required by claims 1, 8 and 15 are not relatively basic computer-implemented functions. Rather, a complex algorithm(s) is required in order to (i) process the vibration data from the vibration sensor by converting it into some useable form (e.g., transforming it by a FFT), (ii) identify at least one component of the converted vibration data to be used in comparison, and (ii) compare the at least one component of the converted vibration data to at least one predetermined vibration component to detect presence or absence of a vibration component within the vibration data that occurs when the fifth wheel properly couples to the kingpin.
With respect to the algorithm(s) required for performing the computer-implemented data processing functions required by claims 1, 8 and 15, the examiner finds that applicant’s disclosure:
Shows an example of converted vibration data having a spectral signature in Figs. 5-6. However, applicant’s disclosure does not provide a specific description of the algorithm used to produce this converted vibration data. While general reference is made to the use of a FFT, no specifics are given as to how the transformation of the vibration data is carried out.
Provides a general overview of different exemplary approaches to identifying at least one component of the converted vibration data to be used in comparison, and comparing the identified component to at least one predetermined vibration component. However, applicant’s disclosure does not provide a specific description of the algorithm used to identify a particular vibration component and compare it to a predetermined vibration component. No specifics are given as to how such identification and comparison are carried out.
Accordingly, applicant has failed to disclose algorithms or step-by-step processes for performing each of the claimed functions. As explained above, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of specific algorithms that describe how the claimed functions are performed. Further, it is not enough that POSITA could theoretically write the necessary algorithm(s); rather, the specification must explain the applicant’s “corresponding structure”.
Conclusion: For computer-implemented apparatus claims 1-14 and computer-implemented method claims 15-20, the specification fails to disclose, in sufficient detail, the “corresponding structure”, i.e., the necessary software-based algorithms or step-by-step processes, used by applicant for performing each of the claimed functions.
III. Lack of Compliance with 35 USC 112
Due to the failure to disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform each of the claimed functions, a rejection under 35 USC 112(b) is set forth below.
IV. How to Prevent Invoking 35 U.S.C. 112(f)
If applicant does not intend to have the above-discussed limitations of claims 1-20 invoke 35 U.S.C. 112(f), applicant may amend the claims so they will clearly not invoke 35 U.S.C. 112(f).
Moreover, if applicant believes the claimed motor control center and its controller, pole-changing circuitry, dynamic-braking circuitry and power-factor correction circuitry have structural meanings known to POSITA, applicant should expressly state on the record that these limitations have structural meanings known to POSITA and provide appropriate evidence in support thereof (e.g., a prior art U.S. patent). Additionally, in order to show that the above-discussed limitations of the claims do not invoke 35 U.S.C. 112(f), applicant must also state on the record and provide evidence in support thereof that the claimed structure can perform the claimed functions in their entirety.
Applicant is reminded that, should the applicant amend a claim limitation so that it does not invoke 35 U.S.C. 112(f) or successfully argue that the limitation does not invoke 35 U.S.C. 112(f), elements from the specification (including any algorithms) will not be read into the claims since the Federal Circuit has repeatedly and clearly held that it will not read unstated limitations into claim language.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 1: Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
NOTE: This rejection is based on the finding that the specification does not adequately disclose the computer and the algorithm(s) that achieve the claimed functions in sufficient detail, i.e., how the inventor intends to achieve the claimed functions. This rejection is not necessarily predicated on a finding that the rejected claims invoke 35 U.S.C. 112(f). Thus, this rejection cannot be overcome merely by establishing that 35 U.S.C. 112(f) is not invoked.
See the discussion of the following decisions/guidance in the APPENDIX:
Ex Parte Smith
Ex parte Jiajun Zhu et al. ‘727
Ex parte Jiajun Zhu et al. ‘723
The 2019 § 112 Guidance2
Computer-implemented functional claim language must be evaluated for sufficient disclosure under the written description requirement of 35 U.S.C. 112(a). When the specification fails to demonstrate that the applicant possessed the full scope of the invention recited in the claims, the specification provides inadequate support for the claims under 35 U.S.C. 112(a). See MPEP 2161.01.
The written description requirement requires a description of an invention, not an indication of a result that one might achieve if one made that invention. Problems satisfying the written description requirement often occur when claim language is generic or functional, or both. Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed, i.e., an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries. Similarly, the written description requirement is not satisfied when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, simply restating the functions recited in the claims is not necessarily sufficient. The algorithm or steps/procedure taken to perform the functions must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. See MPEP 2161.01, section I.
It is not enough that a skilled artisan could theoretically write a computer program(s) to achieve the claimed functions because a specification must explain how the inventor intends to achieve the claimed functions to satisfy the written description requirement. Further, a description that merely renders the invention obvious does not satisfy the written description requirement. Sufficient information must be provided to show that the inventor had possession of the claimed invention, including details about how a disclosed general purpose computer or processor is programmed to achieve the desired outcomes defined by the claimed functions.
In this case, applicant’s original disclosure fails to describe the particular software-based algorithms or step-by-step processes required to transform a general-purpose computer system into a special-purpose computer system for performing all of the claimed functions. That is, applicant’s disclosure describes desired/intended outcomes, but fails to sufficiently disclose the required means for achieving those outcomes.
As explained in the above section with the heading Claim Construction, applicant’s original disclosure fails to describe the particular software-based algorithms or step-by-step processes required to perform the computer-implemented data processing functions recited in claims 1, 8 and 15. The same is true of the computer-implemented data processing functions/ limitations of claims 2, 5, 7, 9, 12, 14, 16, 18 and 19.
As explained in Part II of the 2019 § 112 Guidance, applicant’s disclosure must describe the claimed invention in sufficient detail (e.g., by disclosure of the required algorithms) to establish that applicant had possession of the claimed invention as of the application filing date. Thus, this rejection under 35 USC 112(a) applies even if the claims are not construed under 35 USC 112(f).
Dependent claims are included in the rejection at least because of their dependencies.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
GROUND 2: Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
GROUND 2, Part A:
NOTE: This rejection is based on the underlying finding that the rejected claims invoke 35 U.S.C. 112(f), i.e., these claims (i) define the invention in terms of functions to be performed, but (ii) fail to recite sufficient structure for performing all of the claimed functions.
The claims are indefinite due to the failure to disclose adequate corresponding structure in the form of specific algorithms or step-by-step processes to perform the computer-implemented data processing functions recited in claims 1, 8 and 15. See the detailed explanation in the above section with the heading Claim Construction. See also Part I of the 2019 § 112 Guidance. The same is true of the computer-implemented data processing functions/limitations of claims 2, 5, 7, 9, 12, 14, 16, 18 and 19.
GROUND 2, Part B:
Claims 15-20 are indefinite for the additional reasons given below.
Claim 15 recites a method step of “generating vibration data based on the sensed vibrations”. Based on applicant’s disclosure, this method step (i) is not performed by a human being, and (ii) appears to be performed by the vibration sensor. However, claim 15 fails to identify any structure that performs the “generating” step. As such, the claim scope exceeds the scope of applicant’s disclosure by allowing for any and all possible implementations of the “generating” step, including performance of the step by a human being, and performance of the step by any and all possible structures other than the disclosed vibration sensor. Thus, the claim is indefinite for being both incomplete and unduly broad due to the failure to tie the recited step to any structure for performing it.
Claim 15 recites a method step of “processing the vibration data to detect presence or absence of a vibration component within the vibration data that occurs when the fifth wheel properly couples to the king pin”. Based on applicant’s disclosure, this method step (i) is not performed by a human being, and (ii) is performed by the controller and its processor. However, claim 15 fails to identify any structure that performs the “processing” step. As such, the claim scope exceeds the scope of applicant’s disclosure by allowing for any and all possible implementations of the “processing” step, including performance of the step by a human being, and performance of the step by any and all possible structures other than the disclosed controller. Thus, the claim is indefinite for being both incomplete and unduly broad due to the failure to tie the recited step to any structure for performing it.
Claim 15 recites a method step of “indicating proper coupling of the fifth wheel to the kingpin when the vibration component is present”. Based on applicant’s disclosure, this method step (i) is not performed by a human being, and (ii) is performed by the indicator under the control of the controller. However, claim 15 fails to identify any structure that performs the “indicating” step. As such, the claim scope exceeds the scope of applicant’s disclosure by allowing for any and all possible implementations of the “indicating” step, including performance of the step by a human being, and performance of the step by any and all possible structures other than the disclosed indicator under the control of the controller. Thus, the claim is indefinite for being both incomplete and unduly broad due to the failure to tie the recited step to any structure for performing it.
Dependent claims are included in the rejection at least because of their dependencies.
AIA – First to File
The present reissue application contains claims to a claimed invention having an effective filing date on or after March 16, 2013. Accordingly, this application is being examined under the AIA first to file provisions.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Gaufin et al.”
US Patent No. 11,731,471 B2
“Mikami et al.”
JP Publication No. 2014-167226 A (with translation)
“Schedrat et al.”
US Patent No. 5,438,881
“Schutt et al. ‘155”
US Patent No. 7,548,155 B2
“Schutt et al. ‘876”
US Publication No. 2019/0118876 A1
“Shesterikov et al.”
SU Publication No. 1142747 A1 (with translation)
“Suo et al.”
JP Publication No. 2002-190069 A (with translation)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
GROUND 3: Claims 1, 3-5, 7, 8, 10-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of Gaufin et al. (U.S. Patent No. 11,731,471 B2).
Claims 1, 3-5, 7, 8, 10-12 and 14 of the instant application are directed to essentially the same fifth wheel system as claims 11-13 of Gaufin et al. While some limitations are arranged differently in claims 1, 3-5, 7, 8, 10-12 and 14 of the instant application compared to that of claims 11-13 of Gaufin et al., a modification involving a mere rearrangement of limitations is recognized to be within the level of ordinary skill in the art. Further, while claims 11-13 of Gaufin et al. are narrower in some respects than the claims of the instant application, a modification involving the mere elimination of an element with the consequent loss of its function is recognized to be within the level of ordinary skill in the art.
GROUND 4: Claims 15 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of Gaufin et al. (U.S. Patent No. 11,731,471 B2).
Claims 15 and 17-19 of the instant application are directed to essentially the same method as claims 1 and 2 of Gaufin et al. While some limitations are arranged differently in claims 15 and 17-19 of the instant application compared to that of claims 1 and 2 of Gaufin et al., a modification involving a mere rearrangement of limitations is recognized to be within the level of ordinary skill in the art. Further, while claims 1 and 2 of Gaufin et al. are narrower in some respects than the claims of the instant application, a modification involving the mere elimination of an element with the consequent loss of its function is recognized to be within the level of ordinary skill in the art.
Overcoming Double Patenting Rejection
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Pertinent Prior Art
The following prior art is considered pertinent to the claimed invention but is not relied upon to reject any claim.
See the discussion of Schutt et al. ‘876, Schutt et al. ‘155, Schedrat et al., Mikami et al., Suo et al. and Shesterikov et al. in the Office action mailed on November 7, 2025.
Response to Arguments
Applicant’s arguments filed on February 9, 2026 have been fully considered.
Applicant argues that the examiner fails to cite support for the positions taken with respect to the analysis under 35 USC 112(f). This argument is not persuasive because the examiner has provided a specific explanation of the authorities relied upon, which includes Federal Circuit decisions, PTAB decisions, and the USPTO guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112”, 84 Fed. Reg. 57 (Jan. 7, 2019), which is referred to herein as the “2019 § 112 Guidance”.
Applicant argues that the examiner’s analysis under 35 USC 112(f) is improper because it fails to follow the three-prong test subscribed by the MPEP. This argument is not persuasive because the examiner has set forth specific findings showing that (a) the claims recite a generic placeholder for performing the claimed function, (b) the generic placeholder is modified by functional language, and (c) the generic placeholder is not modified by sufficient structure for performing all of the claimed functions. Further, as explained in the APPENDIX, the examiner relies on Williamson Test 2 as the basis for determining that 35 U.S.C. 112(f) is invoked by claim terms that (i) define the invention in terms of a function(s) to be performed, but (ii) do not include the word “means”. Accordingly, any argument that challenges the invocation of 35 U.S.C. 112(f) on the basis of Williamson Test 1 cannot be considered dispositive.
Applicant takes issue with the examiner’s discussion of Williamson Test 1 and Williamson Test 2. However, the examiner’s explanation correctly reflects the Court’s distinction between (i) a claim term that fails to recite sufficiently definite structure, and (ii) a claim term that recites a function without reciting sufficient structure for performing that function. Further, Egenara shows that it is proper to rely on Williamson Test 2 (i.e., the claim term recites one or more functions without reciting sufficient structure for performing those functions) as the basis for determining that 35 U.S.C. 112(f) is invoked.
Applicant further argues that the examiner has applied an unduly high standard for the requirements of 35 USC 112(a), (b) and (f). The examiner disagrees because the 112(f) analysis, GROUND 1, and GROUND 2, Part A are based on Federal Circuit decisions, PTAB decisions, and the 2019 § 112 Guidance.
Concerning the examiner’s finding that the disclosed controller is a computer-implemented controller which is specially configured/programmed to perform the claimed functions, applicant argues that this finding represents a conclusion that the term “controller” is not a nonce term (generic placeholder). This argument fails. If the claims only required a generic computer-implemented controller (lacking special programming to perform claimed functions), then the claimed controller would not be a generic placeholder. However, in this case, the claims require a specific computer-implemented controller (which must be equipped with special programming to perform claimed functions). Since the special programming is not recited in the claims, the claimed controller constitutes a generic placeholder for the corresponding structure relied upon by applicant to perform the claimed functions.
With respect to GROUND 1 and GROUND 2, Part A, applicant argues that the specification includes sufficient disclosure of algorithms to perform the functions of transforming the vibration data, and identifying and comparing vibration components. This argument is not persuasive. The examiner has correctly found that a complex algorithm(s) is required in order to (i) process the vibration data from the vibration sensor by converting it into some useable form (e.g., transforming it by a FFT), (ii) identify at least one component of the converted vibration data to be used in comparison, and (ii) compare the at least one component of the converted vibration data to at least one predetermined vibration component to detect presence or absence of a vibration component within the vibration data that occurs when the fifth wheel properly couples to the kingpin. The examiner has also correctly found that (i) the specification provides only a general description of possible approaches to achieving the intended outcomes, and (ii) the specification fails to disclose adequate corresponding structure in the form of a specific algorithm(s) or step-by-step process(es) to perform all of the claimed functions. It is not enough that POSITA could theoretically write the necessary algorithm(s) using known approaches; rather, the specification must explain the applicant’s “corresponding structure”.
Applicant’s arguments fail to address GROUND 1 separately. As explained above, GROUND 1 is not necessarily predicated on a finding that the rejected claims invoke 35 U.S.C. 112(f). Thus, this rejection cannot be overcome merely by establishing that 35 U.S.C. 112(f) is not invoked. See Part II of the 2019 § 112 Guidance. In this case, applicant’s original disclosure fails to describe the particular software-based algorithms or step-by-step processes required to transform a general-purpose computer system into a special-purpose computer system for performing all of the claimed functions. That is, applicant’s disclosure describes desired/intended outcomes, but fails to sufficiently disclose the required means for achieving those outcomes.
With respect to GROUND 2, Part B, applicant argues that the examiner provides no authority for the standards being applied. This is not persuasive because 35 USC 112(b) serves as the authority for the rejection. Applicant further argues that it is improper to conclude that a claim is indefinite because of alleged undue breadth, citing MPEP 2173.04. However, MPEP 2173.04 does not prohibit a finding of indefiniteness due to undue breadth. Further, the examiner has explained why the claim is indefinite for being both incomplete and unduly broad due to the failure to tie recited steps to any structure for performing them. As a result, the scope of the claim cannot be ascertained with a reasonable degree of certainty.
Applicant indicates that filing of a terminal disclaimer will be deferred to later in the prosecution. This does not constitute a proper and complete response to the double patenting rejections.
Concerning the YouTube videos listed on applicant’s Information Disclosure Statement, the USPTO does not currently have the capability of retaining records in unwritten form. For this reason, any video recording must be submitted in the form of a written transcript and/or screen shots in order to be considered. It is suggested that the written transcript of a video be submitted together with copies of selected images of the video, with a discussion of the correlation between the transcript and the copies of the video images. See MPEP 609.04(a), subsection II.
Final Action
THIS ACTION IS MADE FINAL.
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Filing and Contact Information
All correspondence relating to this application should be directed:
By Patent Center3: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail4 to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
APPENDIX
Discussion of Cases Dealing with Computer-Implemented
Functional Claim Limitations and Compliance with 35 U.S.C. 112
Williamson v. Citrix Online, LLC
In Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), the Federal Circuit clarified the standard for determining whether 35 U.S.C. 112(f)5 applies to a claim limitation that (i) defines the invention in terms of a function(s) to be performed, but (ii) does not include the word “means”. Specifically, the en banc section of Williamson:
Expressly overruled previous Federal Circuit decisions, which found that: (a) the presumption flowing from the absence of the term “means” is a strong one that is not readily overcome; and (b) 35 U.S.C. 112(f) does not apply in the absence of the term “means” unless the limitation essentially is devoid of anything that can be construed as structure.
Explained the Federal Circuit’s concern that such an unjustified heightened burden resulted in a proliferation of functional claiming untethered to 35 U.S.C. 112(f).
Emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by those of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
Clarified that, when a claim term lacks the word “means”, the presumption can be overcome and 35 U.S.C. 112(f) will apply if it is demonstrated that the claim term:
Fails to recite sufficiently definite structure, or else
Recites a function without reciting sufficient structure for performing that function.
Because “or else” is used to introduce the second of two alternatives, the standard clarified by the en banc section of Williamson constitutes two distinct (i.e., alternative) tests for determining whether the presumption flowing from the absence of the term “means” is overcome. These will be referred to herein as “Williamson Test 1” (i.e., the claim term fails to recite sufficiently definite structure), and “Williamson Test 2” (i.e., the claim term recites a function without reciting sufficient structure for performing that function).
[AltContent: textbox (NOTE: In this case, examiner relies on Williamson Test 2 as the basis for determining that 35 U.S.C. 112(f) is invoked by claim terms that (i) define the invention in terms of a function(s) to be performed, but (ii) do not include the word “means”. Accordingly, any argument that challenges the invocation of 35 U.S.C. 112(f) on the basis of Williamson Test 1 cannot be considered dispositive.)]
In Williamson, the Federal Circuit also addressed (a) the proper manner of construing a claim limitation that invokes 35 U.S.C. 112(f), (b) the proper standard for determining whether “corresponding structure” is disclosed pursuant to 35 U.S.C. 112(f) in cases involving a computer-implemented invention, and (c) the question of whether such a claim limitation is definite under 35 U.S.C. 112(b)6. Specifically:
Construing a means-plus-function claim term is a two-step process:
First, one must identify the claimed function.
Then, one must determine what structure, if any, disclosed in the specification corresponds to the claimed function.
Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.
Even if the specification discloses corresponding structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function.
Where there are multiple claimed functions, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.
In the case of computer implemented inventions that rely upon special software (special programming) to execute the claimed functions, the structure disclosed in the specification must be more than a general purpose computer or microprocessor. Rather, the “corresponding structure” is an algorithm(s) for performing the claimed functions. The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.
The testimony of one of ordinary skill in the art (or other extrinsic evidence) cannot supplant the total absence of structure from the specification.
If the patentee fails to disclose adequate corresponding structure, the claim is indefinite. In other words, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function(s) in the claim, a means-plus-function clause is indefinite.
In Williamson, the Federal Circuit specifically addressed the term “module for…” and held that:
The “module for…” invoked 35 U.S.C. 112(f) because it did not recite sufficiently definite structure. Rather, the “module for…” merely replaced the term “means” with the well-known nonce word “module” such that it set forth the same black box recitation of structure for providing the same specified function as if the term “means” had been used.
The patent’s written description made clear that the “module for…” cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer, i.e., a general purpose computer programmed to perform particular functions pursuant to instructions from program software.
The patent’s drawings and written description did not disclose an algorithm for performing each of the claimed functions of the claimed “module”.
The “module for…” was indefinite under 35 U.S.C. 112(b) due to the failure to disclose any structure corresponding to at least one of the functions performed by the claimed “module”.
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology
In Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the Federal Circuit addressed (a) the proper manner of construing a claim limitation that invokes 35 U.S.C. 112(f), (b) the proper standard for determining whether “corresponding structure” is disclosed pursuant to 35 U.S.C. 112(f) in cases involving a computer-implemented invention, and (c) the question of whether such a claim limitation is definite under 35 U.S.C. 112(b). The explanation and findings in Aristocrat preceded and are consistent with similar findings in Williamson (discussed above).
In Aristocrat, the Federal Circuit explained:
The purpose of means-plus-function claiming, as provided in and restricted by 35 U.S.C. 112(f), is to avoid pure functional claiming.
If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function of a means-plus-function limitation, then the patentee has not paid the price required by 35 U.S.C. 112(f). Rather, the patentee is improperly attempting to claim in functional terms unbounded by any reference to structure in the specification.
In cases involving a computer implemented invention, where a limitation invokes 35 U.S.C. 112(f), the disclosure of only a general purpose computer as the structure that performs a particular function amounts to pure functional claiming. Because general purpose computers can be programmed in very different ways to perform a given task, simply disclosing a general purpose computer does not limit the scope of the claim to the “corresponding structure” required by 35 U.S.C. 112(f).
The disclosure of a standard (i.e., general purpose) microprocessor with “appropriate programming”, without any guidance to determine the meaning thereof, is not sufficient because the specification does not set forth any specific algorithm or any step-by-step process for performing the recited function(s).
Computer-implemented means-plus-function limitations lack sufficient disclosure of the corresponding structure when the specification fails to disclose the specific algorithm(s) required to transform a general purpose computer into a special purpose computer equipped to perform the claimed function(s). Thus, the “corresponding structure” is an algorithm(s) for performing the claimed functions.
There is a distinction between language that simply describes the function to be performed and the required disclosure of an algorithm(s) by which it is performed. In other words, it is not enough to disclose desired results or intended outcomes; rather, the means of achieving those results/outcomes must be disclosed in the form of a specific algorithm(s) that describes how the claimed function(s) is performed.
The specification is not required to include a listing of source code or a highly detailed description of the algorithm. It is required, however, to provide a sufficiently detailed description of the algorithm required to perform the claimed function(s).
The disclosure of “corresponding structure” required by 35 U.S.C. 112(f) should not be conflated with the less strict enablement requirement of 35 U.S.C. 112(a)7 because it serves the very different purpose of limiting the scope of the claim to the particular structure disclosed.
It is not sufficient for the patentee to simply state or later argue that persons of ordinary skill in the art would know what structures to use (i.e., what specific algorithm to employ) to accomplish the claimed function(s), i.e., to argue that the enablement requirement is met. The inquiry is whether one skilled in the art would understand the patent specification itself to disclose, in sufficient detail, the “corresponding structure” (i.e., the necessary software-based algorithm) for performing the claimed function(s).
If the patentee fails to disclose adequate corresponding structure, the claim lacks specificity and is indefinite.
Egenara, Inc. v. Cisco Systems, Inc.
In Egenara, Inc. v. Cisco Systems, Inc., 972 F.3d 1367 (Fed. Cir. 2020), the Federal Circuit:
Explained that patentees are not permitted to freely engage in functional claiming while circumventing 35 U.S.C. 112(f) simply by avoiding the use of the word “means”.
Relied upon the two-test standard clarified in Williamson in conjunction with other decisions finding that 35 U.S.C. 112(f) will apply if it is demonstrated that the claim term amounts to a generic term, a black box recitation of structure and/or a coined nonce word that fails to recite sufficiently definite structure.
Stressed the importance of giving due consideration to Williamson while cautioning against relying on pre-Williamson precedent.
Emphasized that the essential inquiry is not whether a claim term recites any structure but whether it recites sufficient structure for performing all of the claimed functions, i.e., a claim limitation is subject to 35 U.S.C. 112(f) if it recites functions without reciting sufficient structure for performing each of those functions.
Noted that the patent’s specification is consistent with an understanding of the claimed “logic to…” as an abstraction for the set of steps designed to accomplish the claimed functions because the specification discloses that the logic has to be implemented via software.
Reiterated that the question is not whether “logic” is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions. Further, mere inclusion of a limitation within a structure does not automatically render the limitation itself sufficiently structural. While the claimed “logic” may connote some structure in the general sense of software, firmware or circuitry, it was not shown to amount to sufficient structure for performing each of the claimed functions.
Concluded that the claimed “logic to…” was no more than a black box recitation of structure for performing the claimed functions and, thus, was merely a generic substitute for “means for…”
Thus, Egenara shows that it is proper to rely on Williamson Test 2 (i.e., the claim term recites one or more functions without reciting sufficient structure for performing those functions) as the basis for determining that 35 U.S.C. 112(f) is invoked.
Altiris Inc. v. Symantec Corp.
In Altiris Inc. v. Symantec Corp., 318 F3d 1363 (Fed. Cir. 2003), the Federal Circuit construed a “means of booting” limitation that was defined in the claims as “including a first set of commands…for booting…and a second set of commands…for booting…” The patent owner argued that the recitation of the first and second set of commands in the claim itself was sufficient structure to perform the entire claimed function since the “commands” are structure in the form of software that will carry out the booting function(s). The Federal Circuit disagreed because, while the recited “commands” constitute structure, they do not constitute sufficient structure to perform the entirety of the claimed function(s). The commands are described solely in functional terms, and one must refer to the specification to determine the structure of those “means” or “commands”. Further, the software-based “commands” are so broad as to give little indication of the particular structure used such that one must still look to the specification for an adequate understanding of the structure of that software. Accordingly, the Federal Circuit ultimately held that the “means of booting” invoked 35 U.S.C. 112(f) because the “commands” were not sufficient structure to perform the entire claimed function.
Thus, like Egenara, Altiris shows that it is not enough to merely claim some structure. The critical question is whether the claim itself recites sufficient structure for performing the entire claimed function—even if there is some structure in the claimed phrase.
Informative PTAB Decisions
The Patent Trial and Appeal Board (PTAB) has issued informative decisions that support the Examiner’s position that Williamson Test 2 may be the basis for invoking 35 U.S.C. 112(f). Although these decisions do not expressly rely on “Williamson Test 2”, they use essentially the same rationale for invoking 35 U.S.C. 112(f). The first of these decisions also addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
Ex Parte Smith
In Ex Parte Smith (Appeal 2012-007631 decided 14 March 2013),8 the PTAB construed a “processor programmed to…” limitation set forth using functional language. The PTAB found a skilled artisan would not recognize “processor” as the name of sufficiently definite structure for performing each of the claimed functions because (a) the claimed functions cannot be executed by a commercially available off-the-shelf (i.e., general purpose) processor without additional programming, (b) the claim did not recite any structure connected to the “processor” other than “memory”, which is not sufficient structure for performing the recited functions, and (c) the term “processor” is different from the terms “circuit” and “circuitry” because the recited processor and associated claim language does not convey to a skilled artisan anything about the internal components, structure, or specific operation of the processor. The PTAB concluded that the claimed “processor” is a non-structural term that would not be understood by one of ordinary skill in the art as having sufficiently definite structure to perform all the recited functions. Rather, “processor programmed to…” was used as merely a substitute for the term “means for…” and thus invoked 35 U.S.C. 112(f).
Since 35 U.S.C. 112(f) was invoked, the PTAB looked to the specification for the disclosure of sufficient “corresponding structure” for performing the claimed functions. Following Aristocrat, the PTAB evaluated whether the specification disclosed an algorithm that transforms a general purpose computer into a special purpose computer that performs the claimed functions. The PTAB found that the specification contained a flow chart and accompanying description that simply restated the claimed functions without conveying to one of ordinary skill in the art how the processor ensured that the claimed functions are performed. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that it failed to describe sufficient “corresponding structure” pursuant to 35 U.S.C. 112(f) and, therefore, “processor programmed to…” was indefinite under 35 U.S.C. 112(b).
In Ex Parte Smith, the PTAB also construed a claim directed to a computer-implemented method reciting steps (i.e., functions) that paralleled the functions used to define the “processor programmed to…” limitation. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that the method claim failed to satisfy the written description requirement of 35 U.S.C. 112(a). The PTAB noted that a description that merely renders the invention obvious does not satisfy the written description requirement. This finding correlates with Part II of the USPTO guidance (hereinafter, the “2019 § 112 Guidance”) entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112”, 84 Fed. Reg. 57 (Jan. 7, 2019) 9, which (i.e., Part II) addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
Ex Parte Erol
In Ex parte Erol (Appeal 2011-001143 decided 13 March 2013),10 the PTAB construed a “processor adapted to…” limitation set forth using functional language. The PTAB found a skilled artisan would not recognize “processor” as the name of sufficiently definite structure for performing each of the claimed functions because (a) the claimed functions cannot be executed by a commercially available off-the-shelf (i.e., general purpose) processor without additional programming, (b) the term “processor” is different from the term “circuit” because the recited processor and associated claim language does not convey how each of the recited functions is achieved, (c) the claim did not recite any structure connected to the “processor” other than a “reader”, which is not sufficient structure for performing the recited functions, and (d) the claims did not recite and the written description did not delineate the internal components of the “processor” or in another way convey structure to skilled artisans to support a conclusion that the claimed “processor adapted to…” is not a purely functional limitation. The PTAB concluded that the claimed “processor” is a non-structural term that would not be understood by one of ordinary skill in the art as having sufficiently definite structure to perform all the recited functions. Rather, “processor adapted to…” was used as merely a substitute for the term “means for…” and thus invoked 35 U.S.C. 112(f).
Since 35 U.S.C. 112(f) was invoked, the PTAB looked to the specification for the disclosure of sufficient “corresponding structure” for performing the claimed functions. Following Aristocrat, the PTAB evaluated whether the specification disclosed an algorithm that transforms a general purpose computer into a special purpose computer that performs the claimed functions. The PTAB found that the specification failed to set forth a sequence of steps of a particular algorithm, or instructions for using a particular piece of hardware, employing a specific source code, or following a particular program. Rather, the description of only a myriad of examples was, in effect, an impermissible attempt to claim every possible way of accomplishing a claimed function. Because the specification failed to disclose an algorithm for performing all of the recited functions, the PTAB concluded that it failed to describe sufficient “corresponding structure” pursuant to 35 U.S.C. 112(f) and, therefore, “processor adapted to…” was indefinite under 35 U.S.C. 112(b).
Other PTAB Decisions
The Patent Trial and Appeal Board (PTAB) has issued other opinions that, while not designated as precedential or informative, are nevertheless instructive.
Ex parte Jiajun Zhu et al. ‘727 (Appeal 2020-005727)
In Ex parte Jiajun Zhu et al. ‘727 (Appeal 2020-005727 decided 04 November 2020),11 the PTAB considered claims directed to computer-implemented methods reciting steps (i.e., functions) performed by a computing device. Specifically, the PTAB addressed whether such claims comply with the written description requirement of 35 U.S.C. 112(a). In doing so, the PTAB provided a detailed discussion of the 2019 § 112 Guidance. Specifically, the PTAB explained that:
The 2019 § 112 Guidance addresses examination of computer-implemented functional claims that recite only the idea of a solution or outcome to a problem but fail to recite details of how the solution or outcome is accomplished.12
When examining computer-implemented functional claims (including computer-implemented method claims), the examiner should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
It is not enough that a skilled artisan could theoretically write a computer program(s) to achieve the claimed functions because a specification must explain how the inventor intends to achieve the claimed functions to satisfy the written description requirement.
An algorithm can be expressed in any understandable terms such as in prose or as a flow chart. Recital of actual computer code is not necessary. However, sufficient information must be provided to show that the inventor had possession of the claimed invention. Such “sufficient information” constitutes details about how a disclosed general purpose computer or processor is programmed to achieve the desired outcomes defined by the claimed functions.
In Ex parte Jiajun Zhu et al. ‘727, the PTAB found that the specification described an outline of the desired results that the computer is expected to achieve, but missing from the specification was the algorithm or logic flow or instructions which would explain how a general purpose computer is programmed to perform the claimed functions. Absent the disclosure of the necessary algorithm(s), the specification failed to convey possession of the computer-implemented invention. Accordingly, the PTAB concluded that the claims failed to comply with the written description requirement of 35 U.S.C. 112(a). Thus, even if a claim is not construed as reciting a means-plus-function limitation, computer-implemented functional limitations require the disclosure of the necessary algorithm (i.e., how the claimed functions are achieved) in order to satisfy 35 U.S.C. 112(a).
Ex parte Jiajun Zhu et al. ‘723 (Appeal 2020-005723)
In Ex parte Jiajun Zhu et al. ‘723 (Appeal 2020-005723 decided 04 November 2020),13 the PTAB considered similar claims and made similar findings to those addressed in Ex parte Jiajun Zhu et al. ‘727 (discussed above).
Ex parte Marc E. Davis et al. (Appeal 2020-006448)
In Ex parte Marc E. Davis et al. (Appeal 2020-006448 decided 02 February 2022),14 the PTAB considered a claim directed to a system defined using plural claim terms “circuitry for…”, which defined the invention in terms of functions to be performed. Specifically, the PTAB addressed whether such claims limitations invoke 35 U.S.C. 112(f) and whether they comply with the definiteness requirement of 35 U.S.C. 112(b).
The PTAB found that:
While the term “circuit” connotes structure, the claim in question contained no contextual language describing the objective or the desired output of the circuit that would provide the skilled artisan with an understanding of the structural arrangements of the circuit elements necessary to carry out the claimed functions.
The specification refuted the idea that “circuit” or “circuitry” conveyed a specific or exact structural arrangement of circuit elements. Rather, the specification’s discussion of computer devices was inconsistent with the ordinary meaning of “circuitry”.
The claim terms “circuitry for…” invoked 35 U.S.C. 112(f) because they failed to recite sufficient structure for performing the claimed functions.
The PTAB affirmed the rejection of the claim for failure to comply with the definiteness requirement of 35 U.S.C. 112(b). That is, the claim was indefinite because the specification failed to disclose adequate corresponding structure for performing all of the claimed functions.
1 When a claim requires the performance of specific functions, as opposed to general computing functions, the corresponding structure is required to be more than a general-purpose computer/memory/ processor storing and executing general purpose computer instructions since the claimed functions are not coextensive with a general purpose computer/memory/processor storing and executing general purpose computer instructions.
2 The USPTO guidance entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112”, 84 Fed. Reg. 57 (Jan. 7, 2019), which is referred to herein as the “2019 § 112 Guidance”.
3 Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
4 Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. See MPEP 1410.
5 Pre-AIA 35 U.S.C. 112, ¶ 6 was recodified by the AIA as 35 U.S.C. 112(f) without any modification to the actual wording thereof. Thus, “35 U.S.C. 112, ¶ 6” is synonymous with “35 U.S.C. 112(f)”. The AIA numbering is used herein.
6 Pre-AIA 35 U.S.C. 112, ¶ 2 was recodified by the AIA as 35 U.S.C. 112(b) with the change from the term “applicant” to the phrase “inventor or a joint inventor”. Thus, “35 U.S.C. 112, ¶ 2” is synonymous with “35 U.S.C. 112(b)”. The AIA numbering is used herein.
7 Pre-AIA 35 U.S.C. 112, ¶ 1 was recodified by the AIA as 35 U.S.C. 112(a) with only the change from the term “inventor” to the phrase “inventor or joint inventor”. Thus, “35 U.S.C. 112, ¶ 1” is synonymous with “35 U.S.C. 112(a)”. The AIA numbering is used herein.
8 Available at: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/ ex_parte_smith_fd2012007631.pdf
9 Available at: https://www.federalregister.gov/documents/2019/01/07/2018-28283/examining-computer-implemented-functional-claim-limitations-for-compliance-with-35-usc-112
10 Available at: https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/ ex_parte_erol_fd2011001143.pdf
11 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions
12 See Part II of the 2019 § 112 Guidance, which addresses computer-implemented functional claim limitations that do not necessarily invoke 35 U.S.C. 112(f).
13 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions
14 Retrievable at: https://developer.uspto.gov/ptab-web/#/search/decisions