Appeal No. 95-3678
Application 07/545,786
Each of independent claims 1, 11 and 13 recites a
plurality of circuit means, different from the memory cells per
se, which can individually be set to an inactive state based on a
deactivating signal. Appellant has presented a convincing
argument as to why this circuit means of claims 1, 11 and 13
cannot be met by the state of the memory cells in any of the
applied prior art references. The examiner has failed to respond
as to how the applied prior art can be interpreted to meet the
invention of claims 1, 11 and 13 when they are given the
interpretation mandated by the last paragraph of 35 U.S.C. § 112
and Donaldson. The examiner’s response is to simply conclude
that “the Board is felt to have adequately considered such issues
as the ’equivalency of means’ in their previous Decision [Answer,
page 3]. For reasons we have discussed above, the issue of claim
interpretation under 35 U.S.C. § 112 and Donaldson has been
properly raised by appellant but has not been considered by the
PTO on this record. The examiner is required to make factual
showings in response to properly raised Donaldson questions as to
how the applied prior art teaches the structure of claimed means
or an equivalent thereof. The examiner has made no such factual
showings in this case.
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