Appeal No. 2004-1334
Application 09/526,457
claim language recites sufficient structure to perform the specified function, then the language
does not come within the purview of § 112, sixth paragraph. See Al-Site Corp. v. VSI Int’l, Inc.,
174 F.3d 1308. 1318, 50 USPQ2d 1161, 1166 (Fed. Cir. 1999). On the other hand, if the claim
language does not define structure which satisfies that function, § 112, sixth paragraph applies.
See Texas Digital Systems, Inc. v. Telegenx, Inc., 308 F.3d 1193, 1208, 64 USPQ2d 1812,
1822-23 (Fed. Cir 2002), and cases cited therein. In the latter instance, the “means” language
must be construed as limited to the “corresponding structure” disclosed in the written description
in the specification and “equivalents” thereof. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850.
The “corresponding structure” is that “structure in the written description necessary to perform
that function [citation omitted],” that is, “‘the specification . . . clearly links or associates that
structure to the function recited in the claims.’ [Citation omitted.]” Texas Digital Systems,
supra. “[A] section 112, paragraph 6 ‘equivalent[]’ . . . [must] (1) perform the identical function
and (2) be otherwise insubstantially different with respect to structure. [Citations omitted.]”
Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364, 54 USPQ2d 1308, 1315-16 (Fed.
Cir. 2000).
If the examiner has not interpreted the “means for” claim language in applying the prior
art, such omission will result in a finding that the examiner has not established a prima facie case
of obviousness because all of the claim limitations have not been considered. Cf. Donaldson,
16 F.3d at 1195-97, 29 USPQ2d at 1850-52; see, e.g., In re Geerdes, 491 F.2d 1260, 1262-63,
180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection under 35 U.S.C.
§§ 103 and 112, “every limitation in the claim must be given effect rather than considering one
in isolation from the others.”).
Considering first the ground of rejection of appealed claims 14, 8 and 9, over the
combined teachings of Fortune and Mallow, the plain language of the appealed claims specifies a
unit comprising at least a modular, self contained room with specified components. The
components of the modular, self-contained room disclosed in Fortune (e.g., col. 3, line 46, to
col. 4, line 14, and Fortune FIG. 2) are described broadly. We point out, in this respect, that the
transitional term “comprising” opens appealed claim 14 to include units containing unspecified
No. 10, which is the Office action mailed April 10, 2003.
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