Appeal No. 1997-2387
Application No. 08/082,373
the applicant’s structure as a template and selecting elements from references to fill the
gaps.).
Having concluded that the examiner has not established a prima facie case of
obviousness, we do not reach appellants' evidence of unexpected results (brief,
pp. 15-16).
The rejection of claims 1-3, 9, 10, 12-15 and 17-19 under § 103 as unpatentable
over Bernoco in view of JP '161 is reversed.
OTHER ISSUES
35 U.S.C. § 112, sixth paragraph, provides explicit guidance for interpreting terms
written in a "means-plus-function" format.
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.
If the specification lacks a disclosed "corresponding structure" for performing the function
recited in the claims, neither an actual means nor means that are "equivalent" to the actual
means can be determined and the claims are indefinite under § 112, second paragraph.
Here, claim 4 contains terms written in a "means-plus-function" format. Upon return
of this application, the examiner should take a step back and evaluate whether the
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