What is the “single means claim” and why is it often rejected?
What is the “single means claim” and why is it often rejected? A “single means claim” is a claim that recites a single means plus a function. These claims are often rejected due to lack of enablement. The MPEP 2164.08(a) explains: “A single means claim, i.e., where a means recitation does not appear in combination…
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 MoreHow should an examiner explain an enablement rejection?
When making an enablement rejection, the examiner should provide a clear explanation focusing on the factors, reasons, and evidence that lead to the conclusion of non-enablement. The MPEP 2164.04 states: “The explanation of the rejection should focus on those factors, reasons, and evidence that lead the examiner to conclude e.g., that the specification fails to…
Read MoreWhat are the principles of compact prosecution in relation to enablement rejections?
The principles of compact prosecution are important in the context of enablement rejections. According to MPEP 2164.04: “In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such…
Read MoreHow can inventors avoid enablement rejections for single means claims?
To avoid enablement rejections for single means claims, inventors should ensure their patent applications provide comprehensive support for the full scope of the claim. The MPEP suggests that problems arise when the specification disclosed at most only those means known to the inventor. To address this: Provide detailed descriptions of multiple ways to achieve the…
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