Ex Parte Beigel et al - Page 16



         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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