Appeal No. 97-4252 Page 7
Application No. 08/226,520
subject to the requirement that a claim "particularly point
out and distinctly claim" the invention. Therefore, if one
employs means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure showing what
is meant by that language. If an applicant fails to set forth
an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as
required by the second paragraph of section 112. Thus, it is
our view that the examiner had a legitimate rationale for
questioning what specific structure comprises the claimed
lighting control means which includes the claimed self-
contained detection means.
For the reasons stated above, the decision of the
examiner to reject claims 1, 4, 5, 7, 8, 15 and 17 under 35
U.S.C. § 112, second paragraph, is affirmed.
The enablement rejection
We will not sustain the rejection of claims 1, 4, 5, 7,
8, 15 and 17 under 35 U.S.C. § 112, first paragraph.
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