In Re Gilbert P. Hyatt

Citations: 708 F.2d 712; 218 U.S.P.Q. (BNA) 195; 1983 U.S. App. LEXIS 13607Docket: 83-551

Court: Court of Appeals for the Federal Circuit; June 6, 1983; Federal Appellate Court

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The United States Court of Appeals for the Federal Circuit upheld the rejection of Gilbert P. Hyatt's claim 35 by the United States Patent and Trademark Office (USPTO) Board of Appeals under 35 U.S.C. Sec. 112. Claim 35 describes a Fourier transform processor and is characterized as a "means-plus-function" claim, yet it only specifies a single element instead of a combination. The board first rejected the claim under 35 U.S.C. Sec. 102, later reversing that rejection but introducing a new rejection under 37 CFR 1.196(b) for failing to distinctly claim the invention. The board reasoned that the format used implied a combination of elements, which the claim did not adequately present. Upon amendment of claim 35, the examiner maintained the Sec. 112 rejection, asserting it remained a single means claim. The board reaffirmed its position, concluding that the claim did not sufficiently outline what the applicant intended to protect, thus failing to meet the requirements of distinctly claiming the subject matter.

The board recognized that the final paragraph of Section 112 is permissive and does not explicitly prohibit single means claims, contrary to the appellant's assertions. However, the board inferred an implied prohibition against such claims when reading the paragraph as a whole, referencing Mr. Federico's commentary on the 1952 Patent Act, which indicated that single means claims—claims that only specify one means along with a functional statement—are not permitted. The appellant contended that he did not intend to claim a combination and that claim 35 accurately reflects his invention. He argued that the second paragraph of Section 112 supports any form of claiming that clearly points out the invention, which he believes to be true. Furthermore, the appellant claimed that the board lacked grounds for asserting an implied prohibition against single means claims and insisted that claim 35 does not fit Federico's definition of a single means claim, as it includes multiple elements such as a Fourier transform processor and transformed output signals.

However, the board concluded that claim 35 constitutes a single means claim, as it is drafted in means-plus-function format and pertains to a single element. The inclusion of multiple descriptive elements does not change the nature of the claim. The board emphasized that claim 35 is defined by what follows "comprising" and that the appellant's classification of each noun as a separate element fails to recognize that these terms merely describe the single claimed means. While agreeing with the board that claim 35 should be rejected under Section 112, the basis for rejection was deemed to stem from the first paragraph of Section 112, which requires that the enabling disclosure in the specification align with the claim's scope. The issue with single means claims is that they potentially cover all means for achieving a stated result, while the specification only discloses the means known to the inventor, leading to a rejection for "undue breadth." The first sentence of the second paragraph of Section 112 mandates clarity and precision in claim language, which is satisfied if the claim's scope is clear and unambiguous.

If the enabling disclosure of a specification does not match the scope of a claim, it does not render the claim indefinite under the second paragraph of 35 U.S.C. § 112; instead, it indicates insufficient disclosure under the first paragraph and should be rejected for that reason. This principle is supported by precedents such as In re Fuetterer, In re Kamal, and In re Wakefield. Claims that are overly broad, which encompass prior art, should be rejected under § 102, while those that exceed the enabling disclosure should be rejected under the first paragraph of § 112. Clear identification of which specific requirements of § 112 are unmet is necessary, whether it concerns clarity of the claim or adequacy of the specification's disclosure. 

The final paragraph of § 112 provides some protection for combination claims drafted in a means-plus-function format, ensuring they are not overly broad, but this does not apply to single means claims. In this case, both the court and the board agree that claim 35 is a single means claim, justifying its rejection under § 112. The court affirms the board's decision to reject the claim without remanding the case, as further arguments would be ineffective. The specification must clearly articulate claims that define the inventor's invention, and means-plus-function claims must be backed by corresponding structures or actions detailed in the specification. The requirement for a written description to enable skilled individuals to make and use the invention is emphasized, along with the best mode requirement, which is not at issue here. Ultimately, the court concludes that the claim is too broad and unsupported, reinforcing the view that single means claims have historically been considered improper.