Appeal No. 1998-2552
Application No. 08/292,977
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶2
The examiner states that the means-plus-function terms as
recited in the claims are indefinite as to their meanings
because the specification fails to point out what the means
encompass, i.e., “it is unclear if the means are limited to the
disclosed embodiment or any possible means that meet the
functionality.” Answer, page 6.
Appellant cites various parts of the specification which
clearly sets forth the structure designated for each means-plus-
function term (Brief, pages 6-7). Accordingly, appellant urges
the rejection is in error. We agree.
As cited by the examiner (Answer, page 6), In re Donaldson3
holds that one must look to the specification to interpret
claimed means plus function language in light of the
corresponding structure, material, or acts described therein,
and equivalents thereof. The strictures of 35 U.S.C. § 112, ¶6,
apply when the word “means” appears in a claim element in
combination with a function where there is not a sufficient
316 F.3d 1189, 1193, 29 USPQ2d 1845, 1850 (Fed. Cir.
1994)(in banc).
3
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