Appeal No. 2000-0979
Application 08/767,743
of inherency, each and every element of the claimed invention.
In re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990).
The examiner finally rejected claims 1-5, 8, 11, 14, 15
and 17 as being anticipated by Inoue. Independent claims 1,
15 and 16 includes “means for inserting a scaling signal into
the video signal before post-processing the video signal.” In
In re Donaldson Co., 16 F.3d 1195, 1189, 29 USPQ2d 1850, 1845
(Fed. Cir. 1994) (in banc), the court of Appeals for the
Federal Circuit stated that:
Per our holding, the “broadest reasonable interpretation”
that an examiner may give means-plus-function language is
that statutorily mandated in paragraph six. Accordingly,
the PTO may not disregard the structure disclosed in the
specification corresponding to such language when
rendering a patentability determination.
Prior to identifying structures, materials, and acts
described in the specification, which correspond to a
particular means, however, the examiner should first determine
if the recited function is even performed in the prior art
reference. Here, the issue is whether the prior art discloses
”inserting a scaling signal into the video signal” as is
recited in independent claims 1, 15 and 16.
Although extraneous limitations should not be read into
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