Appeal No. 1998-2578
Application No. 08/443,307
et seq. ( Rev. 1, Feb. 2000).2 The MPEP sets forth a 3-prong analysis for determining if
a claim limitation will be interpreted to invoke 35 U.S.C. § 112, sixth paragraph. Here, I
find nowhere in the record, including the Request for Rehearing, that the examiner has
done the required analysis or made a finding that the sixth paragraph does not apply to
the instant claim language. Next, the MPEP at page 2100-160 sets forth the
procedures of determining if the written description adequately describes the
corresponding structure, materials or acts necessary to support a limitation which
invokes 35 U.S.C. § 112, sixth paragraph. Here, I find nowhere in the record, including
the Request for Rehearing, that the examiner has done the required analysis or made a
finding that the sixth paragraph does not apply to the instant claim language due to a
lack of correspondence to the disclosed structure and acts. MPEP 2183 at page 2100-
162 sets forth "Making a Prima Facie Case of Equivalence" which states the "[i]f the
examiner finds that a prior art element performs the function specified in the
claim, . . . the examiner should infer from that prior art element is an equivalent . . .
[t]he burden then shifts to applicant to show that the element shown in the prior art is
not an equivalent of the structure, material or act disclosed in the application. Here, I
2 A copy is attached to this decision. At the time of the filing of the decision and
the Request for Rehearing by the examiner, the MPEP sets forth the requisite
procedure and findings to be made by an examiner. MPEP 2181 at pages 2100-158
quotes In re Donaldson, 16 F.3d 1189, [1194-95,] 29 USPQ2d 1845, [1850] (Fed. Cir.
1994) "[p]er our holding, the 'broadest reasonable interpretation' that an examiner may
give mean-plus-function language is that statutorily mandated in paragraph six.
Accordingly, the PTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability determination."
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