Appeal No. 2002-1300
Application 09/481,422
finding of equivalence. We agree with appellants that the
examiner has failed to provide any evidence, other than his mere
opinion, that the structure disclosed by Witt is an equivalent to
the claimed compensation means. The structure disclosed in Witt
clearly performs the claimed function in a different way from the
corresponding structure disclosed in appellants’ specification,
and the Witt structure is not clearly interchangeable with the
appellants’ disclosed structure. Since we find that appellants
have demonstrated non-equivalence, and since the rejection is
under 35 U.S.C. § 102, we do not sustain the examiner’s rejection
of claim 17.
Although we have found that Witt does not disclose an
equivalent structure under 35 U.S.C. § 102, MPEP § 2183 also
notes that the examiner should also consider whether the prior
art supports a rejection under 35 U.S.C. § 103. We have made no
findings as to whether the claimed compensation means would have
been obvious to the artisan within the meaning of 35 U.S.C.
§ 103. We leave it to the examiner to determine in the first
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