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, wePage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007