Appeal No. 2004-0087 Page 8
Application No. 09/677,705
USPTO is not exempt from following the statutory mandate of 35 U.S.C. § 112,
paragraph 6, which reads:
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.
Accordingly, the USPTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability determination.
In order to meet a "means-plus-function" limitation, the prior art must (1) perform
the identical function recited in the means limitation and (2) perform that function using
the structure disclosed in the specification or an equivalent structure. Cf. Carroll Touch
Inc. v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840 (Fed.
Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d
1451, 1454 (Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12
USPQ2d 1382, 1386 (Fed. Cir. 1989).
Mullis clearly fails to teach any of the support means disclosed in the present
application. In addition, the examiner has not set forth a sufficient basis as to why
Mullis' fastening system 100 or surface 96 would be equivalent to any of the support
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