Appeal No. 96-2094
Application 08/282,783
and 13 contain similar language. The examiner contends on
page 8 of the final rejection that “[t]he functional
statement[s] such as ‘whereby’, ‘so that’ and ‘wherein’
clauses in claims 6, 12-14 cannot serve to distinguish claims,
which are not process claims, from [the] reference since it
does not [sic, they do not] define any structure.” The
examiner also contends on page 10 of the answer that “Leleu’s
guide cam surface [5c or 13b] is similar to appellant’s guide
cam surface, thus, it inherently achieves the
same ‘interrelationship of components’ [called for] in
appellant’s claims.” We do not agree with either contention.
First, the examiner’s contention that the “so that”
clause in claim 12, and the similar language in claims 6 and
13, cannot serve to distinguish over the prior art is
incorrect. See, for example, In re Swinehart, 439 F.2d at
212, 169 USPQ at 228-29 (“. . . any concern over the use of
functional language at the so-called point of novelty . . . to
distinguish over a reference disclosure by emphasizing a
property or function which may not be mentioned by the
reference . . . is misplaced.”). Second, the examiner’s
contention that Leleu’s guide cam surface 5c or 13b is
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