Appeal No. 96-0974
Application 08/024,299
conclusion, and provides reasons why the prior
art element should not be considered an
equivalent.") to show that the element shown in
the prior art in not an equivalent of the
structure, material or acts disclosed in the
application. In re Mulder, 716 F.2d 1542, 219
USPQ 189 (Fed. Cir. 1983). [Footnote 10
omitted.]
The closest the examiner comes to addressing the § 112, ¶ 6
issue in the Answer (at 6), wherein he states that Kohno's
claimed "check means" and "switch means" are "fairly good
substitutes" for appellants' claimed "discovery means" and
"line selecting means." This statement is both belated and
insufficient to satisfy the examiner's initial burden of proof
under § 112, ¶ 6 and the PTO Guidelines to explain which of
the means-plus-function limitations, if any, are subject to
the provisions of § 112, ¶ 6 and, with respect to such
limitations, to identify the reference structure that the
examiner believes is identical to or equivalent to appellants’
disclosed structure for performing the recited function.
For all of the foregoing reasons, we are unable to
sustain the rejection of claim 1 or the rejection of claim 3,
which stands or falls (in this case stands) therewith.
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