Appeal No. 2002-1477
Application No. 09/544,849
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claim 14, the Examiner attempts to
read the various limitations on the disclosure of Nishimura. In
particular, the Examiner (Answer, page 3) points to the
illustrations in Figures 4 and 5 of Nishimura of the spring element
6 which is disposed between a disc 3 and spindle motor hub 2 and
which serves to mount the disc to the hub.
Appellants’ arguments in response (Brief, pages 9-18) focus on
the assertion that independent claim 14 is set forth in means-plus-
function format and that the Examiner has not properly interpreted
the limitations of the appealed claims in accordance with the
decision in In re Donaldson, 16 F.3d 1189, 1191, 29 USPQ2d 1845,
1848-49 (Fed. Cir. 1994). After reviewing the Nishimura reference
in light of the arguments of record, we are in general agreement
with Appellants’ position as stated in the Brief.
As alluded to by Appellants, in order to properly interpret a
claimed means-plus-function element, the Examiner’s burden of
establishing a prima facie case involves at least two requirements.
Initially, the Examiner must provide evidence that the structure
identified in a prior art reference actually performs the function
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