Appeal No. 2002-0986 Page 3
Application No. 09/222,282
to the respective positions articulated by the appellants and the examiner. As a
consequence of our review, we make the determinations which follow.
Claim 1 reads as follows2:
1. An indexing means for a non-rotating circular core cutting
knife comprising;
a) a circular knife defining a central orifice and a
positional index adjacent to the central orifice,
b) a knife mounting mandrel sized to pass through
and closely fit the central orifice,
c) an [sic, a] positional index engaging means
secured to the mandrel,
d) a means for securing the knife in place on the
mandrel,
e) a worm gear secured to the mandrel,
f) a worm shaft having as a part thereof a worm and
the worm is operably engaged with the worm gear,
g) an overrunning coupling operably secured to the
worm shaft so that the coupling in an engaged portion of a
cycle rotates the knife in the direction of rotation of a core
being cut.[3]
2 We note that the preamble of the claim is not commensurate in scope with the body of the claim,
in that the preamble is directed to an indexing means for a cutting knife while the body of the claim
actually recites both a circular knife and an indexing means for the knife. Additionally, the claim is replete
with “means” recitations and it is not apparent to us what structure disclosed in appellants’ specification
corresponds to these “means.” Merely by way of example, it is not clear to us what two structures
correspond to the recited “means” in paragraphs c) and d) of claim 1. While one of these “means” could
correspond to the keyway shown in Figure 4, we find no other structure which appears to correspond to
the other of these two “means.” We observe that, if one employs means-plus-function language in a
claim, one must set forth in the specification an adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as required by the second paragraph of section 112.
In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). With this in mind, the examiner
may wish to review claim 1 to determine what disclosed structure corresponds to each of appellants’
“means” recitations in claim 1 to ensure compliance with the second paragraph of 35 U.S.C. § 112.
3 This period should apparently be a comma.
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