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 (2)
The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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 2164.08(A) – Single Means Claim (1)
The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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:
Patent Law (2)
The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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 (2)
The In re Hyatt case is a significant legal precedent related to single means claims, as mentioned in MPEP 2164.08(a). The MPEP states:
“The court in In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) held that a single means claim which covered every conceivable means for achieving the stated purpose was not in compliance with the first paragraph of 35 U.S.C. 112 because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.”
This case established that single means claims that are overly broad and not fully supported by the specification can be rejected under the enablement requirement.
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: