Ex parte VELLER - Page 6




          Appeal No. 97-0754                                         Page 6           
          Application No. 08/408,478                                                  



          Accordingly, the PTO may not disregard the structure disclosed in           
          the specification corresponding to such language when rendering a           
          patentability determination.  In accordance with In re Donaldson,           
          16 F.3d at 1195, 29 USPQ2d at 1850, "if one employs means-plus-             
          function language in a claim, one must set forth in the                     
          specification an adequate disclosure showing what is meant by               
          that language.  If an applicant fails to set forth an adequate              
          disclosure, the applicant has in effect failed to particularly              
          point out and distinctly claim the invention as required by the             
          second paragraph of section 112."  In addition, it is the                   
          appellant's burden under the second paragraph of 35 U.S.C. § 112            
          to precisely define the invention.  See In re Morris, 127 F.3d              
          1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997).                          


               In this instance, the disclosure (specification, p. 4 and              
          original claim 1) adequately disclose what is meant by the                  
          claimed means for connecting the adjoining ends of the shaft                
          sections.  However, it is our view that the disclosure does not             
          adequately disclose what is meant by the claimed means for                  
          engaging the overlapping inner surface of the larger end with the           
          overlapped outer surface of the smaller end.  Specifically, we              








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