Appeal No. 1997-2774
Application No. 08/080,471
contests the rejection, stating that since the claims depend
from method claims having multiple steps, each claim must be
interpreted as an apparatus including a "means for"
accomplishing each recited step. With such an interpretation,
the claims would include multiple means. Appellant further
refers to section 806.05(e) of the Manual of Patent Examining
Procedure (MPEP) as providing approval for such a claim
format. We agree with the examiner.
According to the MPEP, § 2164.08(a), a single means claim
is defined as a claim in which "a means recitation does not
appear in combination with another recited element of means,"
and "is subject to an undue breadth rejection under 35 U.S.C.
112, first paragraph." The MPEP refers to In re Hyatt, 708
F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983), wherein
the court explained,
The long-recognized problem with a single means
claim is that it covers every conceivable means for
achieving the stated result, while the specification
discloses at most only those means known to the
inventor. See O'Reilly v. Morse, 56 U.S. 62, 112
(1853). Thus, the claim is properly rejected for
what used to be known as "undue breadth," but has
since been appreciated as being, more accurately,
based on the first paragraph of §112... .
The final paragraph of §112 saves combination
claims drafted using means-plus-function format from
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