Appeal No. 1998-2578
Application No. 08/443,307
structures from the drawings in the Request for Rehearing at page 5, the examiner has
not interpreted the claim limitations in light of 35 U.S.C. § 112, sixth paragraph.
I interpret appellant’s argument referencing the specification and disclosed
invention to be an argument with respect to 35 U.S.C. § 112, sixth paragraph, as to the
appropriate interpretation of the recited means-plus-function limitation(s) as mandated
by the statute and clarified by Donaldson. As discussed above, I find that the
examiner has not made factual findings in the record that (1) Kashigi performs the
"equivalent" function; and (2) the function of Kashigi is performed in the same manner
as disclosed. Therefore, I would remand the case to the examiner to make any
appropriate factual findings and claim interpretations as deemed appropriate in light of
appellant’s arguments in the Supplemental Reply.
The majority at page 7 indicates that appellant has not made a showing that the
prior art structures are "not equivalents." I view this as "putting the cart before the
wagon" and improperly shifting the burden before the examiner has met the initial
burden. While the MPEP is clear that "[i]f the examiner finds . . . the prior art element
is an equivalent" then the examiner concludes anticipation of the claimed limitation, but
the MPEP does not state that the examiner must communicate this finding to appellant.
I view it as a given that any "FINDING" of the examiner must be stated in the record or
it is not a finding, either factual or legal. In the present record, I neither find a clear
finding by the examiner nor do I find such a clear finding by the majority upon which a
decision may be made. The majority, at pages 3 and 4, state that "we do not see how
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