Appeal No. 95-3678
Application 07/545,786
correct manner, the invention of claims 1, 11, 13 and 14 is not
suggested by the applied references.
Although the examiner has argued that the Board
considered Donaldson issues in the previous decision, the record
in this case does not support this assertion. The court decision
in Donaldson was rendered after the Board had rendered its
previous decision in this case, and the Board decision does not
make any reference whatsoever to the interpretation of the claims
in accordance with claims drafted in means plus function form.
Although claims drafted in means plus function format were
always interpreted in light of the specification as set forth in
the last paragraph of 35 U.S.C. § 112, Donaldson clarified the
meaning of the statutory language and how it was to be
implemented during the prosecution of applications before the
Patent and Trademark Office (PTO). There is no evidence in this
case that the claim interpretations mandated by Donaldson have
ever been considered by the PTO. On this record, it appears to
us that the following two questions must still be answered: (1)
what structure should be read into the claims corresponding to
the claimed means plus function elements? and (2) does the
applied prior art suggest the obviousness of this structure?
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