Appeal No. 1996-3525 Page 13
Application No. 08/089,595
limitation is anticipated by the prior art element. The
burden then shifts to applicant to show that the element
shown in the prior art is 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). No further analysis of equivalents is required of
the examiner until applicant disagrees with the
examiner's conclusion, and provides reasons why the prior
art element should not be considered an equivalent.
Section 2184 of the MPEP provides
If the applicant disagrees with the inference of
equivalence drawn from a prior art reference, the
applicant may provide reasons why the applicant believes
the prior art element should not be considered an
equivalent to the specific structure, material or acts
disclosed in the specification.
. . .
When deciding whether an applicant has met the
burden of proof with respect to showing nonequivalence of
a prior art element that performs the claimed function,
the following factors may be considered. First, unless an
element performs the identical function specified in the
claim, it cannot be an equivalent for the purposes of 35
U.S.C. 112, sixth paragraph. Pennwalt Corp. v.
Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed.
Cir. 1987), cert. denied, 484 U.S. 961 (1988).
Second, while there is no litmus test for an
"equivalent" that can be applied with absolute certainty
and predictability, there are several indicia that are
sufficient to support a conclusion that one element is or
is not an "equivalent" of a different element in the
context of 35 U.S.C. 112, sixth paragraph. Among the
indicia that will support a conclusion that one element
is or is not an equivalent of another are:
(A) Whether the prior art element performs the
function specified in the claim in substantially the same
way, and produces substantially the same results as the
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