Appeal No. 95-5103 Page 10
Application No. 08/074,303
which are connected to the buttons are the claimed "means for
enabling" (answer, p. 6).
Initially we note that if the examiner believes that the
appellant's specification does not describe what is meant by
the various "means-plus-function" limitations recited in the
claims under appeal, he should make a rejection under 35
U.S.C. § 112, second paragraph. As explained in In re
Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49
(Fed. Cir. 1994), the PTO may not disregard the structure
disclosed in the specification corresponding to "means-plus-
function" language when rendering a patentability
determination. The court in Donaldson agreed with the general
principle espoused in In re Lundberg, 244 F.2d 543, 547-48,
113 USPQ 530, 534 (CCPA 1957), that the sixth paragraph of
section 112 does not exempt an applicant from the requirements
of the first two paragraphs of that section. Although
paragraph six statutorily provides that one may use
means-plus-function language in a claim, one is still subject
to the requirement that a claim "particularly point out and
distinctly claim" the invention. Therefore, if one employs
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