Appeal No. 97-1626
Application 08/299,123
of 35 U.S.C. § 112 is to provide those who would endeavor, in
future enterprise, to approach the area circumscribed by the
claims of a patent with the adequate notice demanded by due
process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate
the possibility of infringement and dominance. In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
In the present case, the area set out and circumscribed
by the “first means for transferring” and the “second means
for transferring” limitations of claim 1 is obscured by
failure of the specification to describe any corresponding
structure for performing the functions specified in these
limitations. As stated by the court in In re Donaldson Co.,
16 F.3d at 1195, 29 USPQ2d at 1850 (Fed. Cir. 1994):
. . . 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.
See also In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884
(Fed. Cir. 1997), wherein the court stated:
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