If a patent applicant is not careful in describing and claiming an invention, there can be unintended negative consequences under the recent, more liberal application of Section 112(f) to claim terms that are nothing more than non-structural generic placeholders.Historically, a patent applicant has been able to describe and claim an invention in terms of the function it performs rather than the structure it contains. This style of drafting is referred to as means-plus-function claim drafting. According to 35 U.S.C. §112(f), “[a]n 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.” Claim limitations invoking 35 U.S.C. §112(f) are thus referred to as “means-plus-function” limitations. A three-part test for identifying a means-plus-function limitation is set forth in MPEP §2181(I):
1. 35 U.S.C. § 112(f) was previously known as Section 112, paragraph 6, prior to the passing of the Leahy-Smith American Invents Action (AIA).
2. Williamson v. Citrix Online, LLC , 792 F.3d 1339, 1349 (Fed. Cir. 2015).
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