Appeal No. 96-0974
Application 08/024,299
Guidelines For Claims Reciting A ["]Means or Step Plus
Function Limitation In Accordance With 35 U.S.C. § 112, 6th
Paragraph, 1162 Off. Gaz. Pat. & Trademark Office 59, 59-60
(May 17, 1994) (hereinafter PTO Guidelines):8
I. Identifying a § 112, 6th paragraph limitation
Although there is no magic language that
must appear in a claim in order for it to fall
within the scope of § 112, 6th paragraph, it
must be clear that the element in the claim is
set forth, at least in part, by the function it
performs as opposed to the specific structure,
material, or acts that perform the function. . .
.
. . . .
II. Examining procedure
. . . .
B. Making a prima facie case of equivalence
If the examiner finds that a prior art
element performs the function specified in the
claim, and is not excluded by any explicit
definition provided in the specification for an
equivalent, the examiner should infer from that
finding that the prior art element is an
equivalent, and should then conclude that the
claimed limitation is anticipated by the prior
art element. The burden then shifts to the
applicant [Footnote 9: "No further analysis of
equivalents is required of the examiner until
applicant disagrees with the examiner’s
8These guidelines also appear in MPEP §§ 2181-84 (Rev.
3, 1997).
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