Appeal No. 2002-1649 Page 4
Application No. 09/405,781
As pointed out by Appellant, the Examiner has failed to properly construe the means plus
function limitations of the claims (Brief at 14-15). In accordance with § 112, ¶ 6, the Examiner
must look to the specification and construe the “means” language as limited to the corresponding
structure disclosed in the specification and equivalents thereof. In re Donaldson Co., 16 F.3d
1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994)(en banc). The first step in construing such
a limitation is to identify the function of the means-plus-function limitation. Texas Digital
Systems Inc. v. Telegenix Inc., 308 F.3d 1193, 1208, 64 USPQ2d 1812, 1823 (Fed. Cir. 2002).
The next step is to identify the corresponding structure in the written description necessary to
perform that function. Id. Two structures may be “equivalent” for purposes of
§ 112, ¶ 6 if they perform the identical function, in substantially the same way, with substantially
the same result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364, 54 USPQ2d
1308, 1315-16 (Fed. Cir. 2000).
Instead of performing the analysis required under § 112, ¶ 6, the Examiner simply finds,
in the prior art, heaters which would be capable of, or would inherently perform, the function
recited in the claims if placed in the correct environment (Answer at 4 and 5). This sort of
analysis was expressly disallowed by Donaldson. Moreover, it results in an incorrect result. Just
because a heating coil or car heater may, in some circumstances, draw air into a reactor by
convection and cause the air to rise past a photocatalyst does not mean the structure located in the
prior art devices of Goswami and Yamanaka are corresponding or equivalent structures within
the meaning of 35 U.S.C. § 112, ¶ 6. The heaters must either have the same structure as the
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