Appeal No. 1998-0607 Page 8
Application No. 08/506,857
specification broadly discloses articulating the mirrors so as to be retractable, it does not
disclose any structure to achieve such articulation.
As our reviewing court stated in In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1885
(Fed. Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed.
Cir. 1994)),
[a]lthough paragraph six statutorily provides that one may use
means-plus-function language in a claim, one is still 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.
In failing to disclose any structure for articulating the mirrors so as to enable them to be
retracted, the appellants have made it impossible for one of ordinary skill in the art to ascertain
the metes and bounds of that claim limitation (the corresponding structure described in the
specification and its equivalents) and, thus, have in effect failed to particularly point out and
distinctly claim the invention. It is not clear, for example, whether the claim limitation may be
met by a simple hinge or whether some type of actuating device is also required to move the
mirror. Moreover, as evidenced by the prior art to Kogita (U.S. Patent No. 5,337,190), Hou
(U.S. Patent No. 5,007,724) and Miller (U.S. Patent No. 4,911,545), for example, various
arrangements for retractable mirrors, permitting and effecting different modes of movement,
such as linear extension, pivoting or a combination thereof, were known in the art at the time
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