Appeal No. 1998-0389 Page 3
Application No. 08/576321
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 102(b)
All of the claims on appeal stand rejected as being anticipated by Benz.
Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990). The examiner’s rejection of the six independent claims and six dependent
claims encompasses merely eight lines (Answer, pages 3 and 4). The appellants focus
upon this in their Brief, arguing that the claims set forth the invention through the use of a
number of “means-plus-function” recitations of structure, and that the examiner has failed to
point out exactly where these limitations are found in the reference.
The twelve claims before us on appeal contain some eighteen recitations of
structure in means-plus-function format, which must be evaluated in the context of the sixth
paragraph of 35 U.S.C. § 112. In order to meet a means-plus-function limitation, the prior
art must perform the identical function recited in the means limitation, and perform that
function using the structure disclosed in the appellant’s specification or an equivalent
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