Appeal No. 1997-3237
Application 08/266,081
§ 102. Accordingly, we reverse.
Turning to the rejection of claims 1 through 14 under 35
U.S.C. § 112, Appellants on page 4 of the brief argue that
both claims recite method steps that are clear and have full
support in the specification. Appellants add that the breadth
of claims should not be addressed by a rejection under 35
U.S.C. § 112 rather by a prior art rejection. Appellants on
pages 4 and 5 of the brief point out that 35 U.S.C. § 112,
sixth paragraph, additionally permits the use of “functional”
claims by construing it to cover the corresponding structure,
material or acts described in the specification and
equivalents thereof. Appellants on page 5 conclude that each
of the limitations “operating said electric motor in a
regeneration mode” at different “operating points” and
“efficiency” levels as well as “providing a battery” are
proper method steps and fully defined by the specification.
In response to Appellants’ arguments, the Examiner on
page 3 of the answer points out that the limitation of
”operating said electric motor in a regeneration mode” is a
functional statement. The Examiner adds that the claims fail
to recite the actual and specific steps for operating the
5
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