Appeal No. 03-2051 Page 6
Application No. 09/127,183
our review of the McArthur disclosure reveals the statement that “the technology
required to implement any of the various methods and apparatus described . . . will
be well known to those skilled in the art” (page 10), which indicates that sufficient
description of the structure as to enable such a comparison to be made is not provided
in the patent.
The same applies to the matter of equivalency. 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 of equivalency or non-
equivalency. These include:
(1) Whether the prior art elements perform the function specified in the
claim in substantially the same way, and produce substantially the same
results as the corresponding structure disclosed in the specification.
Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d
1225, 1229-30 (Fed. Cir. 1999).
(2) Whether a person of ordinary skill in the art would have recognized the
interchangeability of the elements shown in the prior art for the
corresponding elements disclosed in the specification. Al-Site Corp. v.
VSI International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165
(Fed. Cir. 1999).
(3) Whether the prior art elements are the structural equivalents of the
corresponding elements disclosed in the specification. In re Bond, 910
F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
(4) Whether there are insubstantial differences between the prior art
elements and the corresponding elements disclosed in the specification.
IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54
USPQ2d 1129, 1138-39 (Fed. Cir. 2000).
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