COMPLEXITY SIMPLIFIED
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Single Means 2

Incorrect Interpretation of Structural Component as Means-Plus-Function Language and Incorrect Application of Single Means Rejection

Overview

On occasion, Examiners may interpret an apparatus that includes a single structural component as being a means-plus-function limitation. In such cases, the Examiner may issue an undue breadth rejection under the first paragraph of 35 U.S.C. § 112 because the Examiner has interpreted the structural component recited in the claim as a single means. For example, the Examiner may assert that the feature “a processor configured to” invokes the sixth paragraph under 35 U.S.C. § 112, and because “processor” is the only means recited in the claim, the claim violates the first paragraph of 35 U.S.C. § 112. In such a case, the Examiner’s rejection may be traversed as follows.

Example Argument

The Office Action alleged that claim [CLAIM NUMBER] was rejected under the first paragraph of 35 U.S.C. § 112 for allegedly reciting a single means. In particular, the Office Action alleged that the term [STRUCTURAL COMPONENT] is the only means recited in claim [CLAIM NUMBER]. Applicants respectfully traverse the rejection as follows.

Before the Office can assert that [STRUCTURAL COMPONENT] is a single means, the Office must determine whether the claim limitation invokes the sixth paragraph of 35 U.S.C. § 112. MPEP § 2181(I) states that a claim feature will be presumed to invoke the sixth paragraph of 35 U.S.C. § 112 if the feature meets the following 3-prong analysis:
(A) the claim limitations must use the phrase "means for" or "step for" (B) the "means for" or "step for" must be modified by functional language (C) the phrase "means for" or "step for" must not be modified by sufficient structure, material, or acts for achieving the specified function.

In this case, claim [CLAIM NUMBER] does not include the recitation “means for” or “step for” and, therefore, cannot be considered to invoke the sixth paragraph of 35 U.S.C. § 112. In addition, the claim features are not written as a function to be performed, but instead recited as sufficient structure to preclude application of the sixth paragraph of 35 U.S.C. § 112. Because the term [STRUCTURAL COMPONENT] cannot be interpreted to invoke the sixth paragraph of 35 U.S.C. § 112, Applicants respectfully submit that claim [CLAIM NUMBER] does not recite a single means, as alleged by the Office Action.

Accordingly, withdrawal of the rejection is respectfully requested.

Important Notes

MPEP § 2164.08(a) states that a single means claim is subject to an undue breadth rejection under 35 U.S.C. § 112, first paragraph. Examiners will sometimes assert that the word “means” in this section of the MPEP is not strictly limited to means-plus-function recitations, but instead covers any type of structure with an open-ended definition in the specification. A complete reading of MPEP § 2164.08(a), however, demonstrates that MPEP § 2164.08(a) only applies to means-plus-function claims and not to claims that recite a specific structure with a specific state of configuration (such as “a processor configured to”) as such claims do not cover every conceivable means for achieving a stated purpose.

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