Appeal No. 2004-1114 Page 5
Application No. 10/079,706
includes a center section and a plurality of resilient arms extending from the
center section and out of the plane of the center section.
From these teachings, we understand claim 1 under appeal to be drawn to a
stop plate, per se, and not a stop plate combined with other elements (e.g., the rose
liner, the exterior sleeve, the dummy lockset, the operating handle). In addition, claim 1
is directed to a combination of two elements expressed in means-plus-function format.
As explained in In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed.
Cir. 1994), the 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.
The court's holding in Donaldson does not conflict with the principle that claims are to
be given their "broadest reasonable interpretation" during prosecution. See, e.g., In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). Generally
speaking, this claim interpretation principle remains intact. Rather, the holding in
Donaldson merely sets a limit on how broadly the USPTO may construe
means-plus-function language under the rubric of "reasonable interpretation." Per
Donaldson, the "broadest reasonable interpretation" that an examiner may give
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007