Ex Parte Kazmierczak et al - Page 8




          Appeal No. 2002-1477                                                        
          Application No. 09/544,849                                                  

          equivalent to and arranged in the same manner as Appellants C-              
          shaped disc mounting structure.                                             
               We also do not sustain the Examiner’s 35 U.S.C. § 102(b)               
          rejection of independent claims 18 (and its dependent claims 19 and         
          20) and 21.  Each of independent claims 18 and 21 contains the              
          language “means for mounting” which, as previously discussed, we            
          found must be properly interpreted as invoking the sixth paragraph          
          of 35 U.S.C. § 112.  Under this interpretation, we reiterate our            
          finding that the Examiner has not established the equivalence of            
          Nishimura’s spring element and Appellants’ C-shaped mounting                
          structure.                                                                  
               We also find to be without merit the Examiner’s contention             
          (Answer, pages 5, 6, 10 and 11) that the “means for mounting”               
          language need not be given patentable weight since claims 18 and 21         
          are method claims.  Our reviewing courts have held that, in                 
          assessing patentability of a claimed invention, all the claim               
          limitations must be suggested or taught by the prior art.  In re            
          Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974).  All words in a              
          claim must be considered in judging the patentability of that claim         
          against the prior art.  In re Wilson, 424 F.2d 1282, 1385, 165 USPQ         
          494, 496 (CCPA 1970).  We further agree with Appellants (Brief,             
          page 24) that the C-shaped mounting structure described in the              

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