Interference No. 104,681
Spears v. Holland
Claim 21 of the Senior party corresponding to the
count is expressed as steps for performing a specified
function without the recital of structure, material, or
acts in support thereof. Therefore, such claim must be
construed to cover the corresponding structure,
material, or acts described in the specification and
equivalents thereof pursuant to 35 USC 112, paragraph
6. Thus, not withstanding that Claim 3 of the Junior
Party is identical to Claim 21 and the count, the
claims may not define the same invention
notwithstanding that the same literal wording is used.
37 CFR 1 633 (b)
In 0.1. Corip. v. Tekmar Co., 115 F.3d 1576, 1583, 42 USPQ2d
1777, 1782 (Fed. Cir. 1997), the Court of Appeals for the Federal
Circuit, in no uncertain terms, determined that although a step
for accomplishing a particular function in a process claim may be
claimed without specificity under 35 U.S.C. § 112, sixth
paragraph, and thus be subject to step-plus-function treatment
under that section of the statute, "claiming a step by itself, or
even a series of steps, does not implicate section 112, T 6."
Most recently, the Federal Circuit again made the same
determination in EpCDn Gas Systems Inc. v. Bauer Comipressors
Inc._, 61 USPQ2d 1470, 1475 (Fed. Cir. 2002). The following
explanation was provided by the Court in 0.1. Corp. v. Tekmar
Co., 115 F.3d at 1583, 42 USPQ2d at 1782:
Merely claiming a step without recital of a function is
not analogous to a mean s plus a function. . . . If we'
were to construe every process claim containing steps
described by an "ing" verb, such as passing, heating,
reacting, transferring, etc. into a step-plus-function
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007