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“When drafting or prosecuting patents under SS 112(f), the key to success is to ensure that the specification adequately describes how the claimed functions are performed, especially in software and AI-related inventions.”

As artificial intelligence (AI) continues to grow in various industries, securing patents for AI technologies is becoming more important. Protect It This article provides an overview of recent Patent Trial and Appeal Board (PTAB) decisions that highlight how SS 112(f) has been applied to AI-related inventions.

Background of 35 U.S.C. According SS 112(f) states: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

When determining whether SS 112(f) applies, Examiners use a three-prong test (see MPEP 2181):

(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 no specific structural meaning) for performing the claimed function;

(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and

(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

Recent Cases

1. Ex The Cla The The Due to the lack of structural disclosure, the PTAB concluded that SS 112(f) applied, and the claims were indefinite under SS 112(b).

Takeaway

: This case highlights the importance of providing adequate structural support for functional claims, especially when using terms like “algorithm” in AI patents. It When drafting AI-related claims, be sure to define underlying structures, such as specific algorithms or processing steps, to avoid invoking SS 112(f) and potential indefiniteness rejections.2. Ex Parte Jing Lan, Appeal No. The Claim 1 recites:

1. 1. 1. A method comprising:

[a] receiving, by a processor of a network security device, a stream of packets representing a network flow;

[b]determining, by the processor, metadata relating to the stream of packets;

[c]matching, by the processor or by a pattern matching and regular expression matching module of a hardware acceleration subsystem of the network security device, application layer payload data of one or more packets of the stream of packets against string patterns and regular expression patterns;

[d]collecting, by the processor or by the hardware acceleration sub-system, statistics relating to the application layer payload data; and

[e]classifying, by the processor, the network flow as being associated with a particular network service of a plurality of network services by applying a machine-learning model to the metadata, results of said matching, and the collected statistics to yield a classification.

[f]The dispute in this case centered around the term “processing resource.” The Examiner argued that the term invoked SS 112(f) because “resource” was a generic placeholder lacking specific structural meaning. The Examiner contended that functional language following the term required structural support in the specification.[g]The PTAB disagreed with the Examiner, finding that “processing resource” did not invoke SS 112(f). The The claim recited sufficient structure, and the specification supported this interpretation, overcoming the presumption of SS 112(f).

[h]Takeaway

: Not all functional terms automatically invoke SS 112(f). The In this case, “processing resource” was sufficiently tied to a known structure–electronic circuitry–to avoid being considered purely functional. When Ex Parte Melvin Lopez and Jessie Rincon-Paz Appeal No. The Claim 1 recites:

A system for intelligent incident and change management, the system comprising:a support resource displaying a user interface;

an active machine learning module configured to monitor an information asset to detect an error in the functioning thereof and generate an incident report based on the detected error;

a ticketing system communicating with the active machine learning module and configured to

1. 1. 1. receive the incident report of the detected error transmitted from the active machine learning module,

transmit the incident report to the support resource for display on the user interface, and maintain a status of the incident report; a configuration and orchestration engine configured to repair the information asset with the detected error in response to initiation thereof by the active machine learning module,

communicate with the ticketing system to cause the ticketing system to change the status of the incident report from an open status to an acknowledge status when the repair is initiated,

verify repair of the information asset with the detected error reported in the incident report, and

communicate with the ticketing system to cause the ticketing system to change the status of the incident report to a resolved status when repair of the information asset with the detected error in the incident report has been successful, and

wherein the active machine learning module is further configured to:

reassign the incident report and attempt-failure data associated therewith for investigation by the support resource when the

status of the incident report does not reach the resolved status,

receive application data;receive information asset data; and

determine and assign priority to the detected error based on the application data and information asset data;

wherein the generated incident report is based on the detected error and the assigned priority.

1. 1. 1. The issue was whether several terms in the claims, including “an active module” and “a configuration and orchestration engine,” invoked SS 112(f). The The The The The Without a disclosed algorithm to perform the claimed functions, the specification failed to provide adequate structural support.

Takeaway

: This case illustrated the importance of providing more than just a general-purpose computer as a corresponding structure in means-plus-function claims involving computer-implemented inventions. To When using nonce words like “module” or “engine,” ensure the specification clearly links these functional terms to a detailed structure, such as an algorithm or specific hardware configuration.

4. Cru Claim 1 recites:

A system comprising:

a source of combustible gas produced from a facility selected from a group consisting of a hydrocarbon production, storage, or processing facility;

a generator connected to the source of combustible gas to receive a continuous flow of combustible gas to power the generator; and

blockchain mining devices connected to the generator;

in which:

the blockchain mining devices each have a mining processor and are connected to a network interface;

the network interface is connected to receive and transmit data through the internet to a network that stores or has access to a blockchain database;

the mining processors are connected to the network interface and adapted to mine transactions associated with the blockchain database and to communicate with the blockchain database;

the network is a peer-to-peer network;

the blockchain database is a distributed database stored on plural nodes in the peer-to-peer network; and

the blockchain database stores transactional information for a digital currency.

This case involved the SS 112(f) analysis of the term “blockchain mining devices.” The petitioner argued that the term was indefinite because it could refer to either mining servers or entire data centers, leading to ambiguity in the claim scope.

The PTAB found that the term “blockchain mining devices” was sufficiently definite in the context of the claim and the specification. The As a result, the term did not invoke SS 112(f), and the claims were not indefinite.

Takeaway

: This case illustrates how ambiguity in the scope of functional terms can lead to disputes over indefiniteness. When Ensure that your specification clearly describes the components and structure of claimed devices, particularly when using terms that could be interpreted in different ways.Best Practices for Navigating SS 112(f) in AI Patents

Using these cases as a guide, patent practitioners should consider the following best practices when drafting AI claims that might trigger SS 112(f) analysis:

Provide detailed structural support: Functional claims should be backed by sufficient structure in the specification. Avoid Failing to disclose such details, as seen in Ex Parte Joon Woo Son, can result in indefiniteness.

1. 1. 1. Avoid overly broad functional language: Using broad functional language without clear structural support is a common pitfall. In Make sure functional terms are anchored to specific structures.

Use recognized structural terms: Use terms that are recognized in the relevant field as structural, such as “controller” or “processing unit.” Terms commonly understood by skilled artisans as referring to known structures, as demonstrated in Ex Parte Jing Lan and Crusoe Energy Systems, are less likely to invoke SS 112(f).

Be clear on claim scope: Ambiguity in functional terms can lead to disputes over claim scope. Provide clear guidance on the meaning of functional terms in the specification, as seen in Crusoe Energy Systems where the specification’s detailed description helped avoid an indefiniteness finding.

Tailor functional claims to the specification: Ensure that the structure performing the function is clearly identified and described in detail in the specification. This can help avoid rejections under SS 112(f) or SS 112(b) for indefiniteness.

The Recipe for Success

When drafting or prosecuting patents under SS 112(f), the key to success is to ensure that the specification adequately describes how the claimed functions are performed, especially in software and AI-related inventions. Lack of clear structure or algorithmic detail can lead to indefiniteness rejections, while thorough disclosures can help broaden the scope of functional claims and overcome these challenges.

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