Appeal No. 96-0974
Application 08/024,299
appellants’ claims, citing Donaldson, 16 F.3d at 1194-95, 29
USPQ2d at 1850. We do not agree that Donaldson contemplates
applying 112, ¶ 6 to means-plus-function claim limitations in
a reference patent. However, we do agree with appellants’
argument that the examiner was required to compare their7
means-plus-function limitations, as construed in accordance
with § 112, ¶ 6, with Kohno’s disclosed structure rather than
with Kohno’s claims in order to determine whether Kohno’s
disclosed structure is identical to or equivalent to
appellants’ disclosed structure for performing the recited
functions. More particularly, the examiner has the initial
burden of (1) determining whether the claims expressly or
implicitly include a means-plus-function or step-plus-function
limitation of the type governed by the provisions of § 112, ¶
6 and (2) if the answer is yes, determining whether the
structure, material, or acts disclosed in the reference as
performing the recited function is or are identical to or
equivalent to the structure, material, or acts disclosed by
appellants for performing that function. See Examination
7Brief at 16.
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