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


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; and

(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 Note

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.