Appeal No. 1998-0810 Page 5
Application No. 08/537,966
25 USPQ2d 1451, 1454 (Fed. Cir 1993). The examiner has disposed of the nineteen
claims before us on appeal, and the some twenty-four recitations of structure in means-
plus-function format that they contain, in only eighteen lines. He has not even alleged that
the requirement set out by the court in Valmont is met, much less has he explained which
elements of the prior art devices perform each function, and whether they are identical to
the appellants’ structure or the equivalents thereof. The examiner merely has maintained
his stance that the control system disclosed in Sawyer ‘566 “can” be operated in the
manner required by the claims, and that is all that is necessary to render the claims
unpatentable over this prior art. From our perspective, however, the examiner’s
explanation of the rejection falls short of establishing that a prima facie case of
obviousness exists with regard to the claimed subject matter, and the rejection therefore
1(...continued)
(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.
IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54
USPQ2d 1129, 1138-39 (Fed. Cir. 2000).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007