Appeal No. 1999-2107 Page 12
Application No. 08/926,299
function description of structure that is substantially different in function and structure than
the bladder recited in Cohen’s claim 6. We find ourselves in agreement with the examiner
that this phraseology recites a structural element followed by an intended use, rather than a
means-plus-function expression of structure.
The guidance provided by our reviewing court on this matter is expressed in
Signtech USA Ltd. v. Vutek Inc., 174 F.3d 1352, 1356, 50 USPQ2d 1372, 1374-75 (Fed.
Cir. 1999), which states that if the word “means” appears in a claim element in
combination with a function, it is presumed to be a means-plus-function element to which
35 U.S.C. § 112, sixth paragraph, applies; however, according to the language of the
statute, the sixth paragraph governs only claim elements that do not recite sufficient
2
structure in support of the means-plus-function element. The court in Signtech decided
that the phrase “ink delivery means” which was in issue there fell under the sixth paragraph
because “ink delivery” is “purely functional language” and the claim “does not recite
disqualifying structure which would prevent application” of the sixth paragraph (174 F.3d at
1356, 50 USPQ2d at 1375). That is not so, in our view, in the situation before us.
Independent claim 34 recites “inflatable pad means for providing cushioning protection
against impact and shock” (emphasis added). The common applicable definition of “pad”
2Citing Sage Prods., Inc. v. Devon Indus., Inc, 126 F.3d 1420, 1427, 44 USPQ2d
1103, 1109 (Fed. Cir. 1997).
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