¶ 7.31.05 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph: Scope of Enablement of a "Single Means" Claim
Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Examiner Note:
1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.
2. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert --is-- or --are-- as appropriate.
3. This form paragraph is to be used only when the claim recites a single element and that element is in means-plus-function format. This situation should be rare.