Appeal No. 2005-0171
Application No. 10/064,380
agreement with Appellants that the Examiner has not properly
interpreted the “means for coupling the capacitor(s) to the coil”
limitation of the claim in accordance with the decision in In re
Donaldson, 16 F.3d 1189, 1191, 29 USPQ2d 1845, 1848-49 (Fed. Cir.
1994. As alluded to by Appellants, in order to properly
interpret a claimed means-plus-function element, the Examiner’s
burden of establishing a prima facie case involves at least two
requirements. Initially, the Examiner must provide evidence that
the structure identified in a prior art reference actually
performs the function set forth in the claims. Further, the
Examiner is required to show whether the identified prior art
structure which performs such a function is equivalent to the
structure disclosed in Appellants’ specification.
On reconsideration of the Examiner’s stated position in
light of Appellants’ arguments in the Request, it is apparent
that the Examiner’s analysis satisfies neither of the above
requirements. As argued by Appellants, the capacitor coupling
means of claim 36 must be interpreted as corresponding to the
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