Appeal No. 97-4056 Page 9
Application No. 08/238,926
view that, because claim 13 does not set forth specifically how
the claimed means functions to regulate flow, the "flow control
means" language of the claim may be broadly interpreted to read
on Parker's structure.
As recently explained in In re Donaldson, 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the Patent and
Trademark Office (PTO) is not exempt from following the statutory
mandate of 35 U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed as
a means or step for performing a specified function without
the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
Accordingly, the PTO may not disregard the structure disclosed in
the specification corresponding to such means when rendering a
patentability determination. Thus, in order to meet a
"means-plus-function" limitation, the prior art must (1) perform
the identical function recited in the means limitation and
(2) perform that function using the structure disclosed in the
specification or an equivalent structure. Cf. Carroll Touch Inc.
v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d
1836, 1840 (Fed. Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg.
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