Appeal No. 95-3876
Application 08/222,009
Iwata. Appellants do not argue that if the function of
"removing the enabling voltage" is performed by the control
voltage generation circuit 18 in Iwata, the structure for
performing the function in Iwata is not the same as or an
equivalent of appellants' under § 112, sixth paragraph. In my
opinion, as a matter of procedure, we should not address the
question of structure under § 112, sixth paragraph, unless
argued by appellants in the first instance. See Examination
Guidelines for Claims Reciting a Means or Step Plus Function
Limitation In Accordance With 35 U.S.C. § 112, 6th Paragraph,
1162 Off. Gaz. Pat. & Trademark Office 59, 59-60
(May 17, 1994) (the examiner initially makes a prima facie
case that a limitation is anticipated by showing that a prior
art structure performs the function, then the burden of going
forth with the evidence shifts to applicant to show that the
prior art structure is not the same as or an equivalent of the
structure, material, or acts described in the specification);
37 CFR § 1.192(c)(6)(iv) (1994) ("For each rejection under
35 U.S.C.
103, the argument shall specify the errors in the rejection,
the specific limitations in the rejected claims which are not
- 25 -
Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 Next
Last modified: November 3, 2007