Appeal No. 1998-0810 Page 4
Application No. 08/537,966
effectively regulate the electroslag refining process” (Answer, pages 3 and 4). The
appellants argue in rebuttal that the rejection must fail because the claims on appeal set
forth the invention through the use of a number of means-plus-function recitations of
structure, and that the examiner has failed to point out exactly where these limitations are
found in the applied prior art. The examiner’s response is that the appellants’ claims
merely set forth a manner or method of use of the apparatus and “the manner in which
these components are operated, since they can clearly be operated in the manner recited
in the appealed claims, cannot be relied upon to further distinguish the appealed
apparatus claims” (Answer, pages 3 and 4).
According to our reviewing court, means-plus-function limitations must be evaluated
in the context of the sixth paragraph of 35 U.S.C. § 112. In order for such a limitation to be
met, the prior art must perform the identical function recited in the means limitation, and
perform that function using the structure disclosed in the appellant’s specification or an
1
equivalent structure. See Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042,
1While there is no litmus test for an “equivalent” that can be applied with absolute
certainty and predictability, there are several indicia that are sufficient to support a
conclusion of equivalency or non-equivalency. These include:
(1) Whether the prior art elements perform the function specified in the claim
in substantially the same way, and produce substantially the same results as
the corresponding structure disclosed in the specification. Odetics Inc. v.
Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30
(Fed. Cir. 1999).
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