Appeal No. 2002-1255 Page 6
Application No. 09/271,440
inherently present in Horie) is not supported by the evidence of record in this appeal.
The examiner's broad conclusory statement that electrodes must be used to move the
mirror, standing alone, is not "evidence." See In re Lee, 277 F.3d 1338, 1342-45, 61
USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
The appellants also argue (supplemental brief, p. 41) that independent claims
111, 113, 117 and 119 recite "a steerable mirror assembly means...for positioning...."
and that the examiner has not treated the means-plus-function recitations in the manner
required by 35 U.S.C. § 112, sixth paragraph. As explained in In re Donaldson, 16 F.3d
1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the USPTO is not exempt
from following the statutory mandate of 35 U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed as a means or step
for performing a specified function without the recital of structure, material, or
acts in support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.
Accordingly, the USPTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability determination.
Horie clearly fails to teach the steerable mirror assembly means disclosed in the
present application. The examiner has not set forth any basis as to why Horie's
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