Appeal No. 2002-1064 Page 4
Application No. 09/126,385
because the specification disclosed at most only those means known to the
inventor. In re Hyatt, 708 F.2d 712, 714-715, 218 USPQ 195, 197 (Fed. Cir.
1983).
We agree with the appellants' argument (supplemental brief, p. 1) that the
reasoning for an enablement rejection set forth in Hyatt is not applicable to claim 10
since claim 10 is not a single means claim. Claim 10 is a combination claim; the
combination being "a baggage screening system including a monitor" and "means for
intentionally causing said monitor to show images of simulated items in selected items
of baggage being screened."
Furthermore, we note that the examiner's position (answer, pp. 6-7) that the
above-noted means-plus-function clause "covers any conceivable means for achieving
the stated purpose" is legally incorrect. As stated in 35 U.S.C. § 112, paragraph 6, and
explained in In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir.
1994), an element of a claim expressed in means-plus-function format is construed to
cover only the corresponding structure, material, or acts described in the specification
and equivalents thereof.
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