Appeal No. 96-0974
Application 08/024,299
"since claim 5 specifically recites steps for increasing said
line count and comparing the current line count with the line
count set at said initializing step, a prima facie case of
anticipation must address the structure [in Kohno for]
performing these acts and set forth [a] rationale for
asserting how the alleged equivalent structure disclosed by
the reference performs these acts" (our emphasis). This
argument appears to confuse "acts," which are not subject to
interpretation under § 112, ¶ 6, with "functions," which are.
See O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583,
42 USPQ2d 1777, 1782 (Fed. Cir. 1997) (§ 112, ¶ 6 is
implicated with respect to method claims "only when steps plus
function without acts are present." (Emphasis in original.)
For the foregoing reasons, the § 102 rejection of claim 5
is therefore reversed, as is the § 102 rejection of claims 6-
8, which stand or fall (in this case fall) therewith.
Apparatus claim 3, which recites each of the elements
depicted in appellants’ Figure 1, and its dependent claim 4,
stand rejected for obviousness over Kohno in view of Lebby,
which discloses an "intelligent interconnect" utilizing
optical links (col. 1, lines 5-7). Referring to Lebby’s sole
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