Appeal No. 2004-0918 Page 6
Application No. 09/715,547
Per Donaldson, the "broadest reasonable interpretation" that an examiner may give
means-plus-function language is that statutorily mandated in paragraph six.
Accordingly, the USPTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability determination. Thus, 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).
In this case, the structure described in the appellant's' specification (see pp. 7
and 11) and shown in the drawings (see Figures 1-5 and 7-9) corresponding to the
"accommodating means" are the L-shaped rails 30, 31 fixed to the opposite side walls
and spaced apart to accommodate an audio or light mixer and the audio or light effect
device.
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
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