Appeal No. 1997-3240
Application 08/176,940
determine the propriety of claim 13 under provisions of 35
U.S.C. § 112, we must first examine the base claim. We note
that claim 8 recites “[a] process ... using a code memory for
storing a plurality of code words” in the preamble, and “the
step: entering simultaneously into the code memory ...” in the
body of the claim.
35 U.S.C. § 112, paragraph 6 reads:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in
the specification and equivalents thereof. [Emphasis
ours.]
Our reviewing court in Rowe v. Dror, 112 F.3d 473, 478,
42 USPQ2d 1550, 1553, (Fed. Cir. 1997) has pointed out that
“[t]erm appearing only in the preamble of the claim is
affirmative structural limitation when the form of the claim
and the language in the specification limits the claimed
invention to that structure.” See In re Paulsen, 30 F.3d
1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (examining
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007