Appeal No. 96-2552
Application 08/161,816
The Federal Circuit stated, 149 F.3d at 1371, 47 USPQ2d at
1599: "However, 'machine' claims having 'means' clauses may
only be reasonably viewed as process claims if there is no
supporting structure in the written description that
corresponds to the claimed 'means' elements." The Federal
Circuit stated that independent claim 1, when properly
construed under 35 U.S.C. § 112, sixth paragraph, is a
machine. Claim 1 is set forth in the decision with "the
subject matter in brackets stating the structure the written
description discloses as corresponding to the respective
'means' recited in the claims," 149 F.3d at 1371, 47 USPQ2d at
1599. As will be shown, the Federal Circuit's decision
appears to substantially limit the treatment of "means" claims
as process claims.
At issue in State Street was U.S. Patent 5,193,056,
issued to Boes, and assigned to Signature Financial Group,
Inc. The only structure disclosed in the Boes patent was "a
personal computer 44 programmed with software 50" (col. 6,
line 49). "The personal computer 44 used by portfolio/fund
accountant 43 is capable of producing printed output 46 and
storing data on data disk 52, which preferably is a floppy
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