Appeal No. 2005-1234 Page 9
Application No. 09/749,752
reference describes an equivalent structure. See In re Bond, 910 F.2d 831, 833,
15 USPQ2d 1566, 1568 (Fed. Cir. 1990). “If the examiner finds that a prior art
element (1) performs the function specified in the claim, (2) is not excluded by
any explicit definition provided in the specification for an equivalent, and (3) is an
equivalent of the means- . . . plus-function limitation, the examiner should provide
an explanation and rationale in the Office action as to why the prior art element is
an equivalent.” Supplemental Examination Guidelines for Determining the
Applicability of 35 U.S.C. 112, para. 6, 65 Fed. Reg. 38,510, 38,514 (June 21,
2000).
In the anticipation rejections over Zeleny, Noblett or Perttunen, the
examiner has construed the structure corresponding to the “means for obtaining
information concerning the positions of the probes to which the target substance
has bound and simultaneously detecting the management information attached
to the test piece” as a photomultiplier (PMT). See Examiner’s Answer pages 6-
72, 163 and 23.4 (“a means for obtaining information concerning the positions of
the probes to which the target substance has bound and simultaneously
detecting the management information attached to the test piece, i.e. a
photomultiplier (PMT)).
As we have discussed above with respect to the construction of the
limitation at issue, the specification specifically excludes a photomultiplier tube as
performing both functions required by the means, that is, obtaining information
2 Setting forth the anticipation rejection over Zeleny.
3 Setting forth the anticipation rejection over Noblett.
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