Appeal No. 2000-2022
Application No. 08/888,663
assembly
does not disclose any adjusting means as claimed, let alone
any structure corresponding to such a means. Appellants
acknowledge such non-disclosure on page 11, lines 8 to 12 of
their brief,2 where they state (emphasis added):
The prior patent to Burenga and Koberlein, the '511
patent, simply shows the applicants' prior structure
for its post driver, and the bearing means for
holding it. But, it did not describe an adjusting
assembly that can shift both laterally and forwardly
the post driver and its carriage generally parallel
to the ground, . . .
In In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d
1845, 1850 (Fed. Cir. 1994), the Court held:
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.
See also In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884
(Fed. Cir. 1997) ("Failure to describe adequately the
necessary structure [corresponding to the claimed means-plus-
2 References herein to appellants' brief are to the
amended brief filed on March 28, 2000.
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