Appeal No. 2003-1272 Page 8
Application No. 10/039,338
employs means-plus-function language in a claim, one must set forth in the specification
an adequate disclosure showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by the second paragraph of section
112. Also, Donaldson does not conflict with the general claim construction principle that
limitations found only in the specification of a patent or patent application should not be
imported or read into a claim. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978). One must be careful not to confuse impermissible imputing of limitations
from the specification into a claim with the proper reference to the specification to
determine the meaning of a particular word or phrase recited in a claim. See E.I. Du
Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d
1129, 1131 (Fed. Cir. 1988).
Thus, claims written in means-plus-function format for which no structure has
been identified gives rise to claims which are not technically sufficient to provide
appropriate notice to a person of ordinary skill in the art of the identity of the exact
structure required, and therefore, the scope of the claim. The test for definiteness in
such instances is whether "structure supporting a means-plus-function claim under
§112, ¶ 6 [appears] in the specification," Atmel Corp. v. Information Storage Devices,
Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999) (emphasis added).
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