Appeal No. 2003-1272 Page 7
Application No. 10/039,338
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
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.
Donaldson similarly does not conflict with the second paragraph of section 112. Indeed,
the court in Donaldson agreed with the general principle espoused in In re Lundberg,
244 F.2d 543, 547-48, 113 USPQ 530, 534 (CCPA 1957), that the sixth paragraph of
section 112 does not exempt an applicant from the requirements of the first two
paragraphs of that section. Although paragraph six statutorily provides that one may
use means-plus-function language in a claim, one is still subject to the requirement that
a claim "particularly point out and distinctly claim" the invention. Therefore, if one
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