Appeal No. 2002-0030 Page 7
Application No. 09/314,267
function" limitation is met by the prior art, an examiner must (1) determine that the prior
art performs the identical function recited in the means limitation; (2) identify the
structure described in the patent specification that corresponds to the claimed function;5
(3) identify the structure in the prior art that performs the claimed function; (4) determine
if the structure in the prior art that performs the claimed function is the same as any
structure described in the patent specification that corresponds to the claimed function;
and if not (5) determine if the structure in the prior art that performs the claimed function
is equivalent to any structure described in the patent specification that corresponds to
the claimed function.
Manual of Patent Examining Procedure (MPEP) § 2183 (Eighth Edition, Aug.
2001) now provides that if the examiner finds that a prior art element (A) performs the
function specified in the claim, (B) is not excluded by any explicit definition provided in
the specification for an equivalent, and (C) is an equivalent of the means plus function
limitation, the examiner should provide an explanation and rationale in the Office action
as to why the prior art element is an equivalent.6
5 Structure disclosed in the specification is corresponding structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim. Medtronic,
Inc. v. Adv. Cardiovascular Sys., Inc., 248 F.3d 1303, 1311, 58 USPQ2d 1607, 1613 (Fed. Cir. 2001).
6 The four tests set forth in MPEP § 2183 for determining whether or not a prior art element is an
equivalent to the corresponding element disclosed in the specification are (A) the prior art element
performs the identical function specified in the claim in substantially the same way, and produces
substantially the same results as the corresponding element disclosed in the specification; (B) a person of
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