Appeal No. 1998-0389 Page 4
Application No. 08/576321
structure. See Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d
1451, 1454 (Fed. Cir 1993).
The initial Valmont requirement is that the prior art perform the same function as
that of the means recited in the claim. While the examiner has alleged that this is the case,
he has not provided a detailed explanation of what structure in Benz performs the various
functions. Moreover, even considering, arguendo, that the Benz structure performs the
claimed functions, the examiner has failed to establish that the structure is the same as that
1
disclosed by the appellants or its equivalent. In this regard, not only has the means in the
1While there is no litmus test for an “equivalent” that can be applied with absolute
certainty and predictability, there are several indicia that are sufficient to support a
conclusion of equivalency or non-equivalency. These include:
(1) Whether the prior art elements perform the function specified in the claim
in substantially the same way, and produce substantially the same results as
the corresponding structure disclosed in the specification. Odetics Inc. v.
Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30
(Fed. Cir. 1999).
(2) Whether a person of ordinary skill in the art would have recognized the
interchangeability of the elements shown in the prior art for the
corresponding elements disclosed in the specification. Al-Site Corp. v. VSI
Int'l Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999).
(3) Whether the prior art elements are the structural equivalents of the
corresponding elements disclosed in the specification. In re Bond, 910
F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
(4) Whether there are insubstantial differences between the prior art
elements and the corresponding elements disclosed in the specification.
(continued...)
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