Appeal No. 2002-0030 Page 9
Application No. 09/314,267
load on one of the torsion elements is transmitted to one or more of the other of the
torsion elements to which said one of the torsion elements is connected;" and if not
(3) 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 of the "means for connecting the torsion elements so that the torsional
load on one of the torsion elements is transmitted to one or more of the other of the
torsion elements to which said one of the torsion elements is connected." In making
this determination, the examiner must provide an explanation and rationale as to why
the prior art element is or is not an equivalent.7
In making determination (1), the examiner should ascertain the impact of the
Federal Circuit decision in Atmel Corporation v. Information Storage Devices, Inc., 198
F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999) which under the facts in that case held
that the corresponding structure must be actually set forth in the instant specification
(i.e., not an open-ended reference to an extrinsic work mentioned in the specification).
Atmel, 198 F.3d at 1382, 53 USPQ2d at 1230 .
7 In applying either test (B) or (D) 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 (see footnote 6
above) the examiner must provide evidence that either (1) a person of ordinary skill in the art would have
recognized the interchangeability of the element shown in the prior art for the corresponding element
disclosed in the specification, or (2) the prior art element is a structural equivalent of the corresponding
element disclosed in the specification.
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