Appeal No. 2005-0171
Application No. 10/064,380
every process claim containing steps described by an ‘ing’ verb,
such as passing, heating, reacting, transferring, etc., into a
step-plus-function, we would be limiting process claims in a manner
never intended by Congress.” See O.I. Corp. v. Tekmar, 115 F.3d
1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997).
The Federal Circuit has also recognized, as is the case here,
that the absence of explicit “step for” language in the claims does
not automatically prevent a limitation from being construed as a
step-plus-function limitation. “[C]laim elements without express
step-plus-function language may nevertheless fall within Section
112, Para. 6 if they merely claim the underlying function without
recitation of acts for performing that function. See Seal-Flex
Inc. v. Athletic Track and Court Construction, 172 F.3d 836, 850,
50 USPQ2d 1225, 1234 (Fed. Cir. 1999). The Court in Seal-Flex, 172
F.3d at 849, 50 USPQ2d at 1234 provided guidance as to how to
interpret process claims that may lack explicit step-plus-function
language as follows:
In general terms, the “underlying function” of a
method claim element corresponds to what that
element ultimately accomplishes in relationship
to what the other elements of the claim and the
claim as a whole accomplish. “Acts,” on the other
hand, correspond to how the function is accomplished.
Therefore, claim interpretation focuses on what the
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