[OA response] Single Means Claim

This is a sample argument.

Claims 1 and 7-9 were rejected under 35 U.S.C. § 112(a). Specifically, the Examiner alleged that claims 1 and 7-9 “fail[ing] to enable any person skilled in the art to make and use the invention because a single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an undue breadth rejection under 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712,714-715,218 USPQ 195, 197 (Fed. Cir. 1983). See MPEP 2164.08(a).”

Applicant respectfully disagrees with the Examiner’s allegation because the claimed invention is clearly not directed to a “single means.” M.P.E.P. § 2164.08(a) (“Single Means Claim”) states:

A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an enablement rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir. 1983) (A single means claim which covered every conceivable means for achieving the stated purpose was held nonenabling for the scope of the claim because the specification disclosed at most only those means known to the inventor.). When claims depend on a recited property, a fact situation comparable to Hyatt is possible, where the claim covers every conceivable structure (means) for achieving the stated property (result) while the specification discloses at most only those known to the inventor (emphasis added).

Unlike In re Hyatt, Applicant’s claims 1 and 7-9 are not means-plus-function claims, i.e., there is no “means recitation” in claims 1 and 7-9. Rather, claims 1 and 7-9 recite a transmit circuit and a reception circuit of an UE and a base station, or corresponding methods of the UE and the base station.

Regardless, although Applicant respectfully disagrees with the Examiner’s allegation for the foregoing reasons, in order to advance prosecution in the instant application, Applicant has amended claim 1 to include an additional feature of receiving system information from a base station. Applicant has similarly amended claims 7-9. Accordingly, Applicant respectfully requests reconsideration and withdrawal of the rejection of claims 1 and 7-9 under 35 U.S.C. § 112(a).

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