Why 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…

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What 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…

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Can 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…

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What 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…

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How 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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