Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
First Paragraph (1)
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] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
To learn more:
MPEP 2100 – Patentability (3)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
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] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
To learn more:
MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (1)
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
MPEP 2166 – Rejections Under 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (1)
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] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
To learn more:
MPEP 2187 – Form Paragraphs For Use Relating To 35 U.S.C. 112(F) Or Pre – Aia 35 U.S.C. 112 (1)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
To learn more:
Patent Law (3)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
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] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
To learn more:
Patent Procedure (3)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
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] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.”
This rejection is based on the principle that a single means claim, which purports to cover all possible ways of performing a function, is not enabled by the specification, which can only disclose a limited number of ways to perform the function.
To learn more:
Sixth Paragraph (1)
35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph) is a provision in patent law that allows an element in a claim to be expressed as a means or step for performing a specified function without reciting the structure, material, or acts in support thereof. This provision affects claim interpretation by limiting the broadest reasonable interpretation of such claim elements.
According to MPEP § 2181, claim limitations invoking 35 U.S.C. 112(f) are interpreted to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The MPEP states:
“The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.”
This means that when 35 U.S.C. 112(f) is invoked, the claim element is interpreted based on the corresponding structure, material, or acts described in the specification, rather than being given its broadest possible interpretation.
To learn more: