Appeal No. 1996-3525 Page 15
Application No. 08/089,595
insubstantial. See Valmont Indus. Inc. v. Reinke Mfg. Co.,
983 F.2d at 1043, 25 USPQ2d at 1455 (In the context of
section 112, however, an equivalent results from an
insubstantial change which adds nothing of significance to the
structure, material, or acts disclosed in the patent
specification); Alpex Computer Corp. v. Nintendo Co., 102 F.3d
1214, 1222, 40 USPQ2d 1667, 1673 (Fed. Cir. 1996) (noting that
equivalents under Section 112, Para. 6, and under the
doctrine of equivalents both relate to insubstantial changes).
In determining whether or not the differences between the
structure in the prior art device and the structure disclosed
in the specification are insubstantial (i.e., indicia (D)
above), it is appropriate in our view to look at indicia (A),
(B) and (C) set forth above in MPEP § 2184.
From our review of the record in the application, the
examiner never specifically found that the structure of Morris
'163 corresponding (e.g., the threaded shaft 35) to the
recited means (i.e., "means disposed about and slidably
engaged with said element for selectively positioning and
maintaining said element intermediate axially spaced first and
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