As an example of a mine blowing up in a PATENT APPLICATION DRAFTING minefield re: section 112 paragraph 2,, see ADVANCED GROUND INFO. SYS., INC. v. LIFE360, INC. 2015- 732 (Fed Cir. July 28, 2016). 

Briefly, the disclosure and claims referred to a “symbol generator” describing the operation of software on a cell phone generating symbols of other cell phone users locations.  The Federal Circuit upheld a District Court decision finding that the term “symbol generator” made the claim indefinite and therefore invalid under Section 112.  The term “symbol generator” was construed as invoking means plus function under 35 U.S.C. § 112, ¶ 6, and the corresponding disclosure was found not sufficient to describe structure, making the term indefinite and therefore invalidating the claim.

“the specification describe[s], in general terms, that symbols are generated based on the latitude and longitude of the participants,” it nonetheless determined that the specification “fails to [disclose] an ‘algorithm’ or description as to how those symbols are actually ‘generated.’” ADVANCED GROUND INFO. SYS., INC. v. LIFE360, INC. (Emphasis added).

“In the case of computer-implemented functions, we require that the specification “disclose an algorithm for performing the claimed function.” See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). The specification can express the algorithm “in any understandable terms including as a mathematical formula, in prose, . . . as a flow chart, or in any other manner that provides sufficient structure.” citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted).” ADVANCED GROUND INFO. SYS., INC. v. LIFE360, INC. (Emphasis added).

It is likely that a simple act of originally writing or later amending either or both of the disclosure and claims could have avoided the problem: e.g., 

 disclosure: (added language in bold)

Each cellular phone/PDA/GPS system is identified on the display of the other phone systems by a symbol that is generated by the cellular phone which is programmed to use data collected from the other phone systems to generate the symbol to indicate its identity. The symbol is placed at the correct geographical location and is correlated with the map on the display.

claims (claim 3):(added language in bold; deleted language in italics)

 symbol generator in said CPU each of the cellular phones comprising a CPU programmed to generate symbols in response to data collected from each of the participants that represent each of the participants' cell phones in the communication network, the symbols displayed generated on the display screen..

additionally or alternatively, the following figure could have been supplied originally or as an amendment:


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James C. Kennedy III, PhD., Esq. LLC