Appeal No. 97-0032
Application No. 08/095,295
inappropriate, in this case, for us to first raise, and then also
review this issue.
Additionally, I believe that it is the examiner skilled in
the art, not this Board, who should initially evaluate and
determine (1) what structure is described in the specification
that corresponds to the claimed means, (2) what structure is
described in the reference that performs the function of the
claimed means, and (3) if the structure described in the
reference that performs the function of the claimed means is the
same or equivalent to the structure described in the
specification that corresponds to the claimed means. With
respect to such considerations, the Manual of Patent Examining
Procedure (MPEP), 6th Edition, Revision 2, July 1996, provides in
section 2183 that
If the examiner finds that a prior art element performs the
function specified in the claim, and is not excluded by any
explicit definition provided in the specification for an
equivalent, the examiner should infer from that finding that
the prior art element is an equivalent, and should then
conclude that the claimed limitation is anticipated by the
prior art element.14
14Guidelines on "Means Or Step Plus Function Limitation
Under 35 U.S.C. § 112, 6th Paragraph" (published at 1162 Off.
Gaz. Pat. Off. 59 (May 17, 1994)) were distributed to all patent
examiners about April 1994 to provide guidance following the
decision on this matter in In re Donaldson Co. Inc., 16 F.3d
3838
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