Appeal No. 1997-3312
Application No. 08/183,787
proposed by the examiner, the examiner has failed to meet his
burden of demonstrating that such a modification would result
in the claimed apparatus. See Uniroyal Inc. v Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439-40 (Fed. Cir.)
cert. denied, 489 U.S. 825 (1988) (a structure created from
the combined teachings of the prior art references "would, in
any event, fall short of the invention" defined by the
claims).
Further, as discussed in the oral hearing of the appeal
in this case, certain elements of appellants' claimed
apparatus had been drafted in "means-plus-function" format
such as the claimed "drive means". Such terms must be
interpreted as limited to the corresponding structure
described in appellants' specification or the equivalence
thereof consistent with 35 U.S.C. § 112, sixth paragraph. In
re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed.
Cir. 1994) (en banc). Here, the examiner has not established
whether or not the "drive means" relied upon in each of the
secondary references has either a corresponding structure to
the described drive means in appellants' specification (see
Figure 5) or equivalence thereof consistent with 35 U.S.C. §
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007