Appeal No. 2003-0778 Page 6
Application No. 09/564,131
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.
As pointed out in In re Hyatt, 708 F2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983),
the sixth paragraph of 35 U.S.C. § 112 is directed specifically to combination claims
and does not address single means claims1. In the instant case, since the structure
which performs the function following the “means for ...” recitation in claim 1 is, in fact,
the divider in the form of a loop, the claim is directed solely to the divider in the form of
a loop and is thus not a claim for a combination. The provisions of the sixth paragraph
of 35 U.S.C. § 112 therefore do not apply to the claims before us.
Moreover, as aptly pointed out by the examiner on pages 7 and 8 of the answer,
claim 1 recites structure (i.e., a divider in the form of a loop) for performing the function
in the “means for ...” clause. Thus, the sixth paragraph of 35 U.S.C. § 112, which
addresses a claim for a combination “expressed as a means or step for performing a
specified function without the recital of structure” is, by its own terms, not applicable
thereto.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
1 “The long-recognized problem with a single means claim is that it covers every conceivable
means for achieving the stated result, while the specification discloses at most only those means known to
the inventor.” Id.
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