Appeal No. 1998-0143
Application No. 08/268,177
judicially created doctrine of obviousness-type double patenting over claims 1-11 of
U.S. Patent No. 5,360,610. Answer,3 pp. 3-4.
According to appellants, the claims stand or fall in separate groups, i.e., claim 11
and claims 12-15, with respect to each issue. Brief,4 p. 6. Therefore, we limit our
discussion to claims 11 and 12. See 37 CFR § 1.192(c)(7) (1995).
We affirm the obviousness-type double patenting rejection of claim 11 and
reverse the remaining rejections of claims 11-15.
OPINION
I. Rejection of claims 11-15 under 35 U.S.C. § 112, ¶ 6
Section 112, ¶ 6 states
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claims shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
The key inquiry in assessing whether § 112, ¶ 6 applies is determining whether a
claim element can be characterized by reciting at least enough structure to essentially
carry out any function recited in the claim element. If it can be so characterized, § 112,
¶ 6 should not apply; if not, § 112, ¶ 6 probably does apply.
3 Paper No. 20, mailed February 19, 1997.
4 Paper No. 15, filed July 19, 1996.
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