Appeal No. 2002-1197
Application 09/131,167
apparatus claim on the ground that it used a "means-plus-
function" term which was considered to be purely functional.
Such a claim was improper because the means term with a stated
function merely described a particular end result, did not set
forth any specific structure, and would encompass any and all
structures for achieving that result, including those which were
not what the applicant had invented. In Greenberg v. Ethicon
Endo-Surgery Inc., 91 F.3d 1580, 1584, 39 USPQ2d 1783, 1785 (Fed.
Cir. 1996), the Court of Appeals for the Federal Circuit noted
that Congress enacted 35 U.S.C. § 112, sixth paragraph
(originally third paragraph), to overrule that holding. In place
of the Halliburton rule, Congress adopted a compromise solution,
one that had support in the pre-Halliburton case law: Congress
permitted the use of means-plus-function language in claims, but
it limited the breadth of such claim language by restricting its
scope to the structure disclosed in the specification and
equivalents thereof. Thus, apparatus claims must either recite
structure to perform a function or must recite means-plus-
function to be interpreted under § 112, sixth paragraph; they
cannot recite purely functional language. Although the statutory
basis of the rejection is not clear, § 112, first paragraph, lack
of enablement is appropriate because the scope of the enabling
disclosure is not commensurate with the scope of the claim
because the specification does not describe all structures for
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