Appeal No. 2005-1980 Page 3
Application No. 10/373,385
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Mansfield 5,527,255 June 18, 1996
Lencoski et al. (Lencoski) 6,035,613 Mar. 14, 2000
Waechter 6,113,525 Sept. 5, 2000
1(...continued)
Without the term "means," a claim element is presumed to fall outside
means-plus-function strictures. See Sage Prods. Inc. v. Devon Indus., Inc., 126 F.3d
1420, 1427, 44 USPQ2d 1103, 1109 (Fed. Cir. 1997). That presumption collapses
when an element lacking the term "means" nonetheless relies on functional terms rather
than structure or material to describe performance of the claimed function. See Al-Site
Corp. v. VSI Int'l, Inc., 174 F.3d 1314, 1318, 50 USPQ2d 1161, 1167 (Fed. Cir. 1999).
A "single means claim" is a claim drafted in "means-plus-function" format yet
reciting only a single element instead of a combination. In re Hyatt, 708 F.2d 712, 713,
218 USPQ 195, 196 (Fed. Cir. 1983). Paragraph six of 35 U.S.C. § 112 sanctions the
use of the means-plus-function format for combination claims only. Id. See generally
O'Reilly v. Morse, 56 U.S. 62, 112-113 (1854); General Elec. Co. v. Wabash Appl.
Corp., 304 U.S. 364, 371, 37 USPQ 466, 469 (1938) ("A patentee may not broaden his
product claims by describing the product in terms of function.").
The statutory basis for the rejection of a "single means claim" is the requirement
of the first paragraph of 35 U.S.C. §112 that the enabling disclosure of the specification
be commensurate in scope with the claim under consideration. In re Hyatt, 708 F.2d at
714, 218 USPQ at 197. 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. Id. Thus, a "single means
claim" is properly rejected for what used to be known as "undue breadth," but which has
since been appreciated as being, more accurately, based on the first paragraph of
35 U.S.C. § 112. Id.; see also In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642,
645-46 (CCPA 1970).
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