Appeal No. 2005-0894
Application No. 09/949,736
iii) are structurally equivalent, In re Bond, 910 F.2d 831,
833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990); and
vi) a person having ordinary skill in the art would have
recognized as interchangeable, Al-Site Corp. v. VSI Int’l, Inc.,
174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999).
Here, there is a dispute between the examiner and the
appellant as to whether Gartner teaches, inter alia, the “means
for relatively moving the integrated circuit with respect to the
laser beam” recited in claim 19. However, neither the examiner
nor the appellant analyzes the scope of the “means for relatively
moving the integrated circuit with respect to the laser beam”
under Section 112, second and sixth paragraphs. As a result,
both the examiner and the appellant fail to fully address the
applicability of the teachings of Garner to the properly
construed apparatus claim in question.
Thus, upon return of this application, the examiner is to:
1) Determine whether the specification provides structure
“corresponding” to the claimed means-plus-function
limitation with the meaning of Section 112, second
paragraph;
4
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