AIPLA Comments on Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations
Written June 17, 2024
On March 18, 2024, the USPTO issued a memorandum to Patent Examiners titled “Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f)),” aimed at providing guidance for evaluating MPF and SPF claim limitations to ensure record clarity. The comments note that ensuring consistency and predictability in § 112(f) determinations is important. We believe, however, that the Memo has not presented enough to alleviate stakeholders’ concerns regarding the uncertainty surrounding the protectability of § 112(f) claims in light of recent USPTO decisions. Rather, the Memo introduces further uncertainty on clarity and scope interpretation in determining both the applicability of § 112(f) and the § 112(a) requirements for MPF and SPF claim limitations. The comments urge the USPTO to provide further clarification regarding considerations of scope interpretation and § 112(a) requirements for MPF and SPF claim limitations, particularly in view of the recent ARP decision in Ex parte Chamberlain.