Appeal No. 2002-0030 Page 10
Application No. 09/314,267
In addition, claims drafted in means-plus-function format are subject to the
definiteness requirement of 35 U.S.C. § 112, second paragraph:
[I]f 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 particularly point out and distinctly claim the invention as
required by the second paragraph of section 112.
In re Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; see also In re Dossel, 115 F.3d
942, 946-47, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997). Thus, in order for a claim to
meet the particularity requirement of the second paragraph of 35 U.S.C. § 112, the
corresponding structure(s) of a means-plus-function limitation must be disclosed in the
written description in such a manner that one skilled in the art will know and understand
what structure corresponds to the means limitation. Thus, if the examiner were to
determine that the appellant's disclosure fails to adequately disclose what structure
corresponds to the claimed "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," then
the examiner should determine if a rejection of claims 1 to 20 under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim the subject
matter which the appellant regards as the invention is appropriate.
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