Appeal No. 96-3902
Application 08/442,742
point out and distinctly claim the invention. Appellants assert that the language does not
present a problem under the second paragraph of Section 112 because the Examiner has
not applied the rejection previously and that many other patents use the same and similar
phraseology. (See brief at pages 8-10.) We disagree with the appellants on this
rationale, but we do find that the claims set forth the invention with reasonable particularity.
The Examiner discusses the “second regulation means” as it relates to the
disclosure of the corresponding structure, materials, or acts under 35 U.S.C. § 112, sixth
paragraph. The Examiner further argues that “it is clearly improper to separate to [sic]
function[s] of the overall structure into an individual means.” (answer page 10). We
disagree. Under the sixth paragraph of section 112, an invention may be claimed in this
manner as a way to provide flexibility in drafting the legal metes and bounds of the
invention. Although the sixth paragraph statutorily provides that one may use
means-plus-function language in a claim, one is still subject to the requirement that a claim
"particularly point out and distinctly claim" the invention. Therefore, if one employs
means-plus-function language in a claim, one must set forth in the
specification an adequate disclosure showing what is meant by that language. If an
applicant fails to set forth an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as required by the second paragraph
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