Appeal No. 2002-0030 Page 17
Application No. 09/314,267
specification, and, if so, whether one skilled in the art would identify the structure from
that description." Id., 198 F.3d at 1381, 53 USPQ2d at 1230. Contrasting paragraph
six with the enablement requirement of paragraph one of 35 U.S.C. § 112, the Federal
Circuit pointed out that the provision in paragraph six "“represents a quid pro quo by
permitting inventors to use a generic means expression for a claim limitation provided
that the specification indicates what structure(s) constitute(s) the means." Id.
As stated in Atmel,
[f]ulfillment of the § 112, ¶ 6 tradeoff cannot be satisfied
when there is a total omission of structure. There must be
structure in the specification. This conclusion is not
inconsistent with the fact that the knowledge of one skilled in
the particular art may be used to understand what
structure(s) the specification discloses, or that even a
dictionary or other documentary source may be resorted to
for such assistance, because such resources may only be
employed in relation to structure that is disclosed in the
specification. Paragraph 6 does not contemplate the kind of
open-ended reference to extrinsic works that ¶ 1, the
enablement provision, does.
Id., 198 F.3d at 1382, 53 USPQ2d at 1230.
I read this discussion in Atmel as an indication that the disclosure of an extrinsic
work, even if incorporated in the specification by reference in accordance with the
guidelines set forth in MPEP § 608.01(p), cannot be relied upon to fulfill the "§ 112, ¶ 6
tradeoff" that the specification indicate what structure(s) constitute(s) the claimed
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