Appeal No. 1997-3694
Application No. 08/277,013
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 applicant to show that the element shown in
the prior art is not an equivalent of the structure, material or acts disclosed in the
application. In re Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed. Cir. 1983).
U.S Patent and Trademark Office, 1186 Official Gazette 86 (September 27, 1994)(footnote omitted).
See also Manual of Patent Examining Procedure, § 2183, Seventh Edition, July 1998 (containing
identical language).
In the instant case, the examiner has not explained how the prior art elements might be capable
of performing each of the claimed functions that appear at least in independent Claims 1, 6, and 9. The
assertion on page 4 of the Answer that the functions are “inherent” in the prior art because the prior art
structures are capable of “performing algebraic calculations” is inconsistent with the law of our
reviewing court. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir.
1994) (claim limitations regarding organization of data in memory held to distinguish over prior art).
See also In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994)(commenting
that prior cases held that computer, once programmed, creates a new machine); In re Noll, 545 F.2d
141, 148, 191 USPQ 721, 726 (CCPA 1976)(“[The claimed invention] comprises physical structure,
including storage devices and electrical components uniquely configured to perform specified functions
-6-
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