「用功能代表結構」以及「功能手段語言」

「用功能代表結構」以及「功能手段語言」

Lighting World, Inc. v. Birchwood Lighting, Inc.（03-1534, -1535）

c) a connector assembly for connecting each pair of adjacent support members, said connector assembly being pivotally connected to said pair of adjacent support members; and

猜看看「connector assembly」屬不屬於Means-Plus-Function的用語！

答案摘錄自：ALACRITECH, INC., v. MICROSOFT CORPORATION,（04-03284）

When a claim term does not use the term “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). To overcome the presumption, a party must demonstrate that the “the claim term fails to recite sufficiently definite structure or recites function without reciting sufficient structure for performing that function.” Id. (internal quotes and citations omitted). The presumption that § 112 ¶ 6 does not apply “is a strong one that is not readily overcome.” Id.

沒有使用means就推定不適用§ 112 ¶ 6，而且這個推定不容易推翻。

In determining whether a claim term recites sufficient structure to avoid application of §112 ¶ 6, the Federal Circuit does not require the claim term to denote a specific structure. Lighting World, 382 F.3d at 1359. Rather, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies structures by their function.” Id. at 1359-60. The Lighting World court further explained that whether the term at issue does not bring to mind a particular structure is not dispositive. “What is important is whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” Id. at 1360.

要決定一個term是否為代表結構，應考慮通常的專業用語和該行業者是否用來標示結構，即使它包含了很廣類別的結構；或是該用語以功能來定義結構亦然。

Similarly, in Lighting World, the court rejected the contention that the term “connector assembly” insufficiently identified a structure because dictionary definitions disclosed that the term “connector” had a reasonably well-understood meaning as a name for structure, even though structure was defined in terms of the function it performed. Lighting World, 382 F.3d at 1360-61. The fact that more than one structure may be described by the term “connector,” did not make the term “connector assembly” any less a name for structure. Id. at 1361.

雖然“connector assembly”係用功能來定義結構，但是依字典的定義顯示： “connector”這個term是結構的名稱，這是合理而且公知的意思。因此“connector assembly”已足以定義為結構。

回過頭看看「Lighting World, Inc. v. Birchwood Lighting, Inc.」中出現的一句話：「The consequence of defining the term “connector assembly” free of the constraints of section 112 ¶ 6 may be to render the claim more vulnerable to attack for invalidity, but that is a risk that a claim drafter assumes by choosing broad structural terms rather than choosing to claim in means-plus-function format under section 112 ¶ 6.」

小心使用「功能代表結構」的用語，因為這使claim很容易無效。