Appeal No. 2000-1473 Page 10
Application No. 08/765,169
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claim 1 includes an element expressed in means-plus-
function format. As explained in In re Donaldson, 16 F.3d
1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the PTO
is not exempt from following the statutory mandate of 35
U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
In accordance with In re Donaldson, 16 F.3d at 1195, 29 USPQ2d
at 1850, "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."
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