Appeal No. 1999-2211 Page 8
Application No. 08/620,427
and ruler-referred to by the board in regard to 35 U.S.C.
102-do not anticipate the claimed 'means' since
the former additionally requires human intervention.
See also In re Bernhart, 417 F2d. 1395, 1399, 163 USPQ 611,
615 (CCPA 1969) where the court stated:
The claims also define the invention as having
plotting means for drawing lines or for illustrating
an object. When such functional language is used in
a claim, 35 U.S.C. § 112 states that “such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof”. The
specification here mentions only mechanical drafting
machines. The claims therefore cover, under section
112, only such mechanical drafting machines and
their equivalents. We know of no authority for
holding that a human being, such as a draftsman,
could ever be the equivalent of a machine disclosed
in a patent application, and we are not prepared to
so hold in this case.
In addition, we add that the neck of the user does not
meet either the claimed means for releasably retaining the ear
pieces (claim 7) or the means for retaining the tubing (claim
8) because the neck of the user is not part of Collins'
receptacle holder.
From all of the above, we conclude that Collins does not
anticipate independent claims 7, 8, or dependent claim 10.
Accordingly, the rejection of claims 7, 8, and 10 under 35
U.S.C. § 102(b) is therefore reversed.
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