Appeal No. 1998-1192
Application 08/456,093
they read on the winding steps disclosed by Santandrea ‘228
(claim 41) and Santandrea ‘618 (claim 60). In their request
for rehearing
(see pages 2 and 3), the appellants submit that these winding
step limitations are step plus function recitations under
35 U.S.C. § 112, sixth paragraph, because they actually embody
function without acts, and that as so construed they should be
treated commensurately with the means for winding limitation
in claim 1 which was found to define over the winding means
disclosed by Santandrea ‘228 (see pages 8 through 10 in the
decision). As we explained on page 7 of the decision,
however, citing O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583,
42 USPQ2d 1777, 1782 (Fed. Cir. 1997),
[t]he term ‘steps’ refers to the generic
descriptions of elements of a process, and the term
‘acts’ refers to the implementation of such steps.
Merely claiming a step without recital of a function
is not analogous to a means plus a function; if
every process claim containing steps described by an
‘ing’ verb, such as passing, heating, reacting,
transferring, etc., were construed as a step plus
function limitation, process claims would be limited
in a manner never intended by Congress.
The “ing” verb “winding” as employed in the step limitations
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