What is a “single means” claim and why is it rejected under 35 U.S.C. 112(a)?
A “single means” claim is a claim that attempts to cover every conceivable means for achieving a stated function while only disclosing at most those means known to the inventor. Such claims are rejected under 35 U.S.C. 112(a) for lack of enablement. MPEP 2166 provides a form paragraph for rejecting single means claims: “Claim [1]…
Read MoreWhy are single means claims often rejected?
Single means claims are often rejected due to enablement issues under 35 U.S.C. 112(a). The MPEP explains: In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because…
Read MoreWhat is a single means claim?
A single means claim is a patent claim where a means recitation (a claim element described in terms of its function rather than its structure) appears alone, without being combined with another recited element of means. According to the Manual of Patent Examining Procedure (MPEP), A single means claim, i.e., where a means recitation does…
Read MoreWhat is the relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections?
The relationship between 35 U.S.C. 101 and 35 U.S.C. 112(a) in utility rejections is closely intertwined. According to MPEP 2107.01: “A deficiency under the utility prong of 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.” This means that if an invention lacks utility under 35…
Read MoreHow does an examiner reject claims for missing essential subject matter under 35 U.S.C. 112(a)?
When an examiner believes that a claim is missing subject matter essential to the practice of the invention, they can reject it under 35 U.S.C. 112(a) for lack of enablement. MPEP 2166 provides a form paragraph for this type of rejection: “Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph,…
Read MoreCan post-filing date evidence be used to determine enablement or written description?
No, post-filing date evidence cannot be used to determine enablement or written description under 35 U.S.C. 112(a). The MPEP 2124 clearly states: “It is impermissible to use a later factual reference showing the state of the art existing after the effective filing date of the application to determine whether the application is enabled or described…
Read MoreWhat are the three requirements for a patent specification under 35 U.S.C. 112(a)?
The three requirements for a patent specification under 35 U.S.C. 112(a) are: Written description Enablement Best mode As stated in the MPEP: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any…
Read MoreWhat options do applicants have to overcome rejections under 35 U.S.C. 112(a) and (b) in international design applications?
Applicants have several options to overcome rejections under 35 U.S.C. 112(a) and (b) in international design applications due to insufficient drawing disclosure. The MPEP suggests the following approach: “Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112…
Read MoreWhat happens if a critical feature is not included in the claims?
If a critical feature disclosed in the specification is not included in the claims, it may lead to a rejection under 35 U.S.C. 112(a). The MPEP 2174 explains: “If the specification discloses that a particular feature or element is critical or essential to the practice of the invention, failure to recite or include that particular…
Read MoreHow does new matter affect AIA status determination?
New matter in a patent application does not affect the determination of AIA status. The MPEP 2159.02 states: “As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that…
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