Appeal No. 2002-1477
Application No. 09/544,849
equivalent to and arranged in the same manner as Appellants C-
shaped disc mounting structure.
We also do not sustain the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claims 18 (and its dependent claims 19 and
20) and 21. Each of independent claims 18 and 21 contains the
language “means for mounting” which, as previously discussed, we
found must be properly interpreted as invoking the sixth paragraph
of 35 U.S.C. § 112. Under this interpretation, we reiterate our
finding that the Examiner has not established the equivalence of
Nishimura’s spring element and Appellants’ C-shaped mounting
structure.
We also find to be without merit the Examiner’s contention
(Answer, pages 5, 6, 10 and 11) that the “means for mounting”
language need not be given patentable weight since claims 18 and 21
are method claims. Our reviewing courts have held that, in
assessing patentability of a claimed invention, all the claim
limitations must be suggested or taught by the prior art. In re
Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). All words in a
claim must be considered in judging the patentability of that claim
against the prior art. In re Wilson, 424 F.2d 1282, 1385, 165 USPQ
494, 496 (CCPA 1970). We further agree with Appellants (Brief,
page 24) that the C-shaped mounting structure described in the
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