Suppose a patent Examiner applies the 3-prong test outlined in MPEP 2181(I) to a claim limitation and makes the determination that 112(f) applies.

The guidance in the MPEP explicitly states that applicant's only options to avoid 112(f) interpretation are to either argue that the claim recites sufficient structure to perform the function, or amend the claim to same standard.

However, this is only prong C, not the whole 3-prong test. What if applicant feels that the claim limitation is not MPF because it fails prong A; that is, it uses a term that connotes structure?

Would it be possible to argue on that basis (i.e., that the Examiner misapplied the 3-prong test at prong A)?

(UPDATE: I now believe the conflict would ultimately boil down to a 112(b) "indefiniteness" rejection on the claim, which would be appealable.)


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