Appeal No. 2004-0021 Page 7
Application No. 09/246,193
and detector grid array 23) and the translation of the first plate relative to the second
plate to occur simultaneously.
In addition, even if the examiner were correct that the term simultaneously as
used in the claimed means clause modifies the verb rotating and does not modify the
verb translating, the examiner has not made any showing that Oda performs that
function using the structure disclosed in the specification (i.e., the three alternative
structures shown in Figures 2-4) or an equivalent structure.1
For the reasons set forth above, the decision of the examiner to reject claims 1
and 2 under 35 U.S.C. § 102(b) is reversed.
1 While there is no litmus test for an "equivalent" that can be applied with absolute certainty and
predictability, there are several indicia that are sufficient to support a conclusion that one element is or is
not an "equivalent" of a different element in the context of 35 U.S.C. § 112, sixth paragraph. Among the
indicia that will support a conclusion that one element is or is not an equivalent of another are:
(A) Whether the prior art element(s) performs the function specified in the claim in substantially the same
way, and produces substantially the same results as the corresponding element(s) disclosed in the
specification. Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30 (Fed.
Cir. 1999);
(B) Whether a person of ordinary skill in the art would have recognized the interchangeability of the
element(s) shown in the prior art for the corresponding element(s) disclosed in the specification. Al-Site
Corp. v. VSI International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999);
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752,
1757 (Fed. Cir. 1998);
(C) Whether the prior art element(s) is a structural equivalent of the corresponding element(s) disclosed in
the specification. In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990);
(D) Whether there are insubstantial differences between the prior art element(s) and the corresponding
element(s) disclosed in the specification. IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422,
1436, 54 USPQ2d 1129, 1138-39 (Fed. Cir. 2000); Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d
1039, 1043, 25 USPQ2d 1451, 1455 (Fed. Cir. 1993).
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