Can an independent claim can have only one non-obvious inventive step?


A system comprising:

     Obvious step
     Inventive step
     Obvious step

Can it be like this to make it broad?

A system comprising:

     Inventive step
  • 2
    By the way, each step can be an "obvious" step as long as the claim as a whole is not obvious, – George White Jul 18 '19 at 22:04

Technically yes, a claim with one step can work - as long as it is not a functionally defined step. A functionally defined step is covered in section 112(f) and explained here in the MPEP. In a functionally defined element the actions of the step are not in the claim. Rather, the result is stated in the step.

Section 112(f) says that this is ok (with multiple steps) and it covers the actions mentioned in the specification that the specification says produce the result of the claim. Below is the explanation of the problem with a single means claim. ("step" is the wording in a functional method claim rather than "means".)

V. SINGLE MEANS CLAIMS A single means claim is a claim that recites a means-plus-function limitation as the only limitation of a claim. 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by its terms is limited to “an element in a claim for a combination.” Therefore, single means claims that do not recite a combination cannot invoke section 112(f) or pre-AIA section 112, sixth paragraph. As such, they are not limited to the structure, material or act disclosed in the specification that performs the claimed function. Thus, a single means limitation that is properly construed will cover all means of performing the claimed function. 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. In re Hyatt, 708 F.2d 712, 218 USPQ 195 (Fed. Cir. 1983). A claim of such breadth reads on subject matter that is not enabled by the specification, and therefore, should be rejected under section 112(a) or pre-AIA section 112, first paragraph. See also MPEP § 2164.08(a).

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  • I'm glad you are part of this site :-) – Giri Jul 18 '19 at 22:27

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