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USPTO Guidance for Application of 35 U.S.C. § 112 to Computer-Implemented Methods, Effective January 7, 2019

On January 4, 2019, the USPTO announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (“Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112”), which took effect on January 7, 2019. The Guidance stated that for a computer-implemented 35 U.S.C. § 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function to avoid an indefiniteness rejection under 35 U.S.C. § 112(b).1 It is not sufficient to argue that one of ordinary skill in the art is capable of writing software to convert a general purpose computer to a special purpose computer (i.e., a computer programmed to perform the disclosed algorithm) to perform the claimed function.2

The Guidance also discusses written description and enablement under 35 U.S.C. § 112(a) for computer-implemented inventions. With respect to the written description requirement, the guidance stated it is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it.3 If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection for lack of written description must be made. 4

With respect to the enablement requirement, the guidance acknowledged that computer-implemented inventions have high level of skill in the art, and similarly high level of predictability in generating programs to achieve an intended result without undue experimentation. However, the guidance pointed out that the applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention, when the enabling knowledge is not known in the art.5

1 See “The Computer-Implemented Functional Claim Limitations Guidance” at p. 11.
2 See id. at p. 12.
3 See id. at p. 19.
4 See id.
5 See id. at p. 21.
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