Appeal No. 98-0584
Application 08/238,948
in light of the appellants' disclosure and then decided what
specific elements should be recited. Such an approach is
improper. As explained by the court in In re Steppan, 394
F.2d 1013, 1019, 156 USPQ 143, 148 (CCPA 1967):
The problem, in essence, is thus one of
determining who shall decide how best to
state what the invention is. By statute,
35 U.S.C. 112, Congress has placed no
limitations on how an applicant claims his
invention, so long as the specification
concludes with claims which particularly
point out and distinctly claim that
invention.
On page 5 of Paper No. 11, the examiner states that "coupled
to respond" and "being connected to enable" are not positive
statements of structural cooperation of the relevant elements.
While such statements are functional in nature, we must point
out that there is nothing wrong in describing the recited
elements in
terms of the function that they perform. As the court in In
re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971)
stated:
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