Appeal No. 2002-1384
Application No. 09/330,311
Lastly, appellant argues (brief, page 14) that “it is essential to the operation of Wallis ‘622 that the
resulting position signal be subsequently double differentiated back to a current signal.”
We agree with the examiner (answer, page 3) that “claims 11-12 invoke 35 U.S.C. § 112,
sixth paragraph,” and that Wallis “performs the function” specified in claim 12.” To prove that
Wallis performs the specified function of claim 12, the examiner’s analysis (answer, pages 3, 5 and
6) of the teachings of Wallis should have stopped at summing junction 34 (Figure 1). The summing
junction 34 in Wallis performs the same function in exactly the same way as the summing junction
318 (Figure 8) of appellant’s disclosed and claimed invention. In other words, the summing
junction 34 functions as “error compensation means for compensating for errors in radial locations
of servo fields stored on tracks of the disc using a second integral [on line 32] of coil input current
to determine compensation values which are added [summing junction 34] to subsequent position
error signals [on line 33] generated from the servo fields.” Wallis, like the disclosed invention,
processes this error compensation signal at another summing junction (summing junction 24 in
Wallis; summing junction 324 in Figure 8 of the disclosed invention). The latter summing junction
(after the double differentiator 36) in Wallis, however, is not needed to demonstrate that Wallis
performs the claimed function of claim 12. Our reviewing court has stated that it is not necessary to
incorporate “structure from the written description beyond that necessary to perform the claimed
function.” Micro Chemical Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258, 52 USPQ2d
1258, 1263 (Fed. Cir. 1999).
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