Appeal No. 2006-0445
Application 08/977,374
be construed as limited to the “corresponding structure” disclosed in the written description in
the specification and “equivalents” thereof. Donaldson, 16 F.3d at 1192-95, 29 USPQ2d at
1848-50.
The “corresponding structure” is that “structure in the written description necessary to
perform that function [citation omitted],” that is, “‘the specification . . . clearly links or
associates that structure to the function recited in the claims.’ [Citation omitted.]” Texas Digital
Systems, 308 F.3d at 1208, 64 USPQ2d at 1822-23. “[A] section 112, paragraph 6 ‘equivalent[]’
. . . [must] (1) perform the identical function and (2) be otherwise insubstantially different with
respect to structure. [Citations omitted.]” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d
1352, 1364, 54 USPQ2d 1308, 1315-16 (Fed. Cir. 2000). “[T]wo structures may be
‘equivalent’ for purposes of section 112, paragraph 6 if they perform the identical function in
substantially the same way, with substantially the same result. [Citations omitted.]”
Kemco Sales, 208 F.3d at 1364, 54 USPQ2d at 1315. “[T]he ‘broadest reasonable interpretation’
that an examiner may give means-plus-function language is that statutorily mandated in
[35 U.S.C. § 112,] paragraph six,” and in this respect, the examiner should not confuse
“impermissibly imputing limitations from the specification into a claim with properly referring
to the specification to determine the meaning of a particular word or phrase in a claim. [Citations
omitted.]” Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850; see also Morris, 127 F.3d 1048,
1055-56, 44 USPQ2d 1023, 1028 (explaining Donaldson).
The only disclosed structure in the written description in appellants’ specification with
respect to the “first means” reads as follows:
The way in which the present invention seals heat shrinkable thin film onto a
container, is to employ a first means to transfer heat to the downwardly extending
portion of the cut piece of thin film. In this sense, the first means can comprise
adapting the thin film to absorb energy . . . by being made from a tinted material, or by
being coated with an energy absorbent coating, for example, printing. The ability of
the opaque or coated film to absorb radiant energy will vary depending upon what
type of tinting or coating is used. A darker or more opaque film will absorb more
energy. [Page 12, l. 29, to page 13, l. 5.]
Thus, as found by the examiner, the structure which corresponds to the “means-plus-
function” language of claims 36 and 41 is “the extending portion being a tinted material or
having an energy absorbing coating, which can be colored and formed by printing” (answer,
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