Apparatus Claims Having Structure not Subject to "Single Means" Rejection
While it is impermissible to have a means-plus-function claim that only has a single means, apparatus claims having a single structural feature cited in the body thereof
are not subject to this limitation. Occasionally, Examiners improperly reject apparatus claims that have a single structural feature recited in the body, such as a processor,
as being "single means" claims. However, this is improper and can be traversed as follows.
The Office Action alleged that claims X and Y potentially raise new issues under 35 U.S.C. § 112, first paragraph, pertaining to “single means” claims. However, Applicants
respectfully submit that the Office Action’s allegation is improper.
MPEP § 2164.08(a) states:
A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an undue breadth rejection under
35 U.S.C. 112, first paragraph. 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 the specification disclosed at most only those means known to the inventor.). When
claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the
stated property (result) while the specification discloses at most only those known to the inventor.
However, the above is only applicable to means-plus-function claims. In In re Hyatt, the claim at issue was a means-plus-function claim having only a single means,
specifically, a “Fourier transform processor comprising incremental means for incrementally generating the Fourier transformed incremental output signals in response to
the incremental input signals.” Per the above, the court held that a single means covering every conceivable means for achieving a stated purpose is improper, but only
held this with respect to means-plus-function claims. Means-plus-function claims are a special class of claims provided for under 35 U.S.C. § 112, sixth paragraph, that
are intended to cover structures, materials or acts covered in the specification. Clearly, if a claim reads on all possible means for achieving a stated purpose, this
frustrates the scope and purpose of 35 U.S.C. § 112, sixth paragraph. However, in the present case, claims X and Y are not a means-plus-function claims, but rather
apparatus claims that recite structure in the body (namely, a processor). No such considerations apply to apparatus claims under U.S. law and it is perfectly acceptable to
claim every allegedly possible “means” to achieve a stated purpose through the form of an apparatus claim. Otherwise, potential infringers would always be able to design
around an Applicant’s invention and the value of, and incentive for, obtaining a patent would be considerably reduced.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.