Appeal No. 1997-2774
Application No. 08/080,471
NAND gates 37, 39, and counter 41. The examiner responds
(Answer, page 10) that "Tanaka would inherently contain a
microprocessor and counter or equivalent elements because it
is performing the same function."
The sixth paragraph of 35 U.S.C. § 112 states that a
claim expressed as a means for performing a specified function
without reciting a structure or material will be construed to
cover the corresponding structure or material described in the
specification and its equivalents. The test for determining
equivalence under the sixth paragraph of section 112 is
whether the differences with respect to the structure
disclosed in the specification are insubstantial, yet the
function is identical. See, for example, Al-Site Corp. v. VSI
International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165
and 1168 (Fed. Cir. 1999). The examiner has failed to
indicate any particular elements in Tanaka that correspond to
the very specific ones disclosed by appellant and listed in
the Brief for the capturing means. Consequently, we find that
Tanaka does not disclose a structure with insubstantial
differences from, or, rather, an equivalent structure within
8
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