Appeal No. 2000-0588 Page 18
Application No. 08/824,110
specification, pages 13-14. Thus, the recitation of the timing signal as comprising a
clock signal and a trigger signal is certainly not consistent with appellants’ underlying
disclosure. Consequently, when reading claim 2 in light of appellants’ underlying
disclosure, which we must do in interpreting the claim, it is impossible to determine with
any certainty what is meant by a timing signal comprising a clock signal and a trigger
signal. Claim 2 and claim 3 which depends therefrom are thus indefinite.
Claims 19, 20 and 22 each recite means or steps for generating an attention
signal in response to said timing signal and for selecting a message in response to said
attention signal. The sixth paragraph of 35 U.S.C. § 112 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 claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
As our reviewing court stated in In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881,
1885 (Fed. Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d
1845, 1850 (Fed. Cir. 1994)),
[a]lthough paragraph six statutorily provides that one may
use means-plus-function language in a claim, one is still
subject to the requirement that a claim "particularly point out
and distinctly claim" the invention. Therefore, if one employs
means-plus-function language in a claim, one must set forth
in the specification an adequate disclosure showing what is
meant by that language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to
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