Appeal No. 2005-0826
Application No. 09/989,563
First, appellants have not shown that the unexpressed limitation is required by
instant claim 10. Section 112, paragraph 6 does not permit incorporation of structure
from the written description beyond that necessary to perform the claimed function.
Structural features that do not actually perform the recited function do not constitute
corresponding structure and thus do not serve as claim limitations. Asyst Technologies,
Inc. v. Empak, Inc., 268 F.3d 1364, 1369-70, 60 USPQ2d 1567, 1571 (Fed. Cir. 2001)
(citations omitted). Second, even if claim 10 were to require such a limitation,
Javanifard describes (Fig. 14; col. 19, ll. 9-28) feedback from the output voltage (to
divider circuit 317) for controlling the output voltage, and thus includes circuitry that
receives the “test supply voltage” as feedback for controlling the “test supply voltage”
within the meaning of the claim.
We therefore sustain the rejection of claims 1 and 10 under 35 U.S.C. § 103 as
being unpatentable over Javanifard and Furumochi, and of claims 2-9, 11-16, and 25
that fall with claim 1 or claim 10.
New grounds of rejection
We enter the following new grounds of rejection against the claims in accordance
with 37 CFR § 41.50(b): Claims 15 and 16 are rejected under 35 U.S.C.
§ 112, first paragraph, as the specification lacks adequate written description and
enablement for claimed subject matter.
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