Appeal No. 1997-1197
Application 08/130,255
display in said prescribed sequence." The rejection of claims
1 and 2 is reversed.
Claims 9-12 and 15
Claim 9 is similar to claim 16 except that it is an
apparatus claim expressed in means-plus-function language.
Appellants argue that the means-plus-function terms must be
interpreted in accordance with 35 U.S.C. § 112, sixth
paragraph, in accordance with In re Donaldson Co.,
16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) (in banc) and
that the cited references do not disclose or suggest either
the function or structural equivalents for the means described
in the specification, such as in figures 10a and 10b
(Br16-17). The Examiner responds that Donaldson is a newly-
raised argument and that Appellants broadly disclose a black
box structure in figures 8A and 8B which is equivalent to
Kajihara (Paper No. 15, page 3). It was argued at oral
hearing that the Examiner failed to properly interpret the
claims under § 112, sixth paragraph. We have several answers
to Appellants' arguments.
First, upon review of the prosecution history, we find
that Donaldson was not raised until the remarks in the
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