Appeal No. 2002-1626 Page 7
Application No. 09/287,135
16 to 19 are original unamended claims3 and accordingly provide their own written
description. Id.
The examiner is correct that the disclosure does explicitly disclose any specific
means for communicating the detected number of chip components in the hopper to the
means for moving the stopper. However, the written description requirement demands
no such disclosure since such a means for communicating is not explicitly claimed.
Moreover, it would appear to us that the disclosure does implicitly disclose that the
detected number of chip components in the hopper is communicated to the means for
moving the stopper for controlling movement of the stopper as claimed.4
For the reasons set forth above, the decision of the examiner to reject claims 7,
8 and 16 to 19 under 35 U.S.C. § 112, first paragraph, is reversed.
3 Claims 7 and 8 both depend from claim 1 which has been amended. However, we fail to see
how the amendment to claim 1 would support the rejection of claims 7 and 8 before us in this appeal.
4 We note that the examiner has not rejected that claims under either (1) the enablement
requirement of 35 U.S.C. § 112, first paragraph, or (2) the definiteness requirement of 35 U.S.C. § 112,
second paragraph. When one employs means-plus-function language in a claim, one must set forth in the
specification an adequate disclosure showing what structure corresponds to that language. If an applicant
fails to set forth an adequate disclosure showing what structure corresponds to the means-plus-function
language used in a claim, the applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112.
.
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