Key takeaways from the recent cases include:
- Structural support is paramount. Claims can be found indefinite due to insufficient structural details for a particular feature used in the claims.
- Context is everything and can make or break a case. Even terms that might seem generic can be exempt from § 112(f) scrutiny if the overall context of both the claims and the specification clearly links them to a specific structure.
- Generic terms require caution and careful handling. Nonce words often trigger means-plus-function claim limitation analysis.
- A detailed description is the most powerful tool in the arsenal. A comprehensive specification can prevent an indefiniteness finding.
To navigate these challenges, patent practitioners should:
— Provide detailed structural support in the specification
— Avoid overly broad functional language
— Use well-recognized structural terms
— Be clear about claim scope
— Align functional claims closely with the specification
When drafting and/or translating AI patents, it is essential to ensure that the specification adequately describes how claimed functions are performed. Thorough disclosures are the key to broadening the scope of functional claims and overcoming potential indefiniteness rejections.
By carefully balancing functional language with structural support, patent practitioners can better protect AI innovations in this rapidly evolving field.
