Appeal No. 2002-0030 Page 16
Application No. 09/314,267
The district court in the Atmel case found that an article referenced in the
patentee's specification was improperly incorporated by reference under the provisions
set forth in MPEP § 608.01(p) and held that, as such, the disclosure in that article could
not be relied upon to comply with the requirement of paragraph six of 35 U.S.C. § 112
that the structure corresponding to a means plus function limitation be disclosed in the
specification. The district court rejected an argument that it should determine whether
the claim was indefinite based on the way the disclosure would be understood by one
skilled in the art, not on the "technical form" of the specification. Id., 198 F.3d at 1377,
53 USPQ2d at 1227.
The Federal Circuit in Atmel determined that the district court erred in its analysis
and should have determined whether sufficient structure was disclosed in the
specification based on the understanding of one skilled in the art. Id., 198 F.3d at
1378, 53 USPQ2d at 1227. However, the Federal Circuit also cautioned that
"consideration of the understanding of one skilled in the art in no way relieves the
patentee of adequately disclosing sufficient structure in the specification." Id., 198 F.3d
at 1380, 53 USPQ2d at 1229. The Federal Circuit disagreed with the district court that
an inquiry under paragraph two of 35 U.S.C. § 112 turns on whether a patentee has
"incorporated by reference" material into the specification relating to structure and
indicated that the proper inquiry is "first whether structure is described in [the]
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