Appeal No. 2006-0696
Application 90/005,546
as being anticipated by Jonathan S. Lindsey, L. Andrew, and David Erb, “Robotic work station
for microscale synthetic chemistry: On-line absorption spectroscopy, quantitative automated thin-
layer chromatography, and multiple reactions in parallel,” Rev. Sci. Instrum. 59(6), June 1988,
pp. 940-950 (Lindsey). Claims 24-26 have been rejected under 35 U.S.C. § 103 as being
unpatentable in view of Lindsey. Claims 1-18, 24-48 and 50-53 have been rejected under
35 U.S.C. § 103 as being unpatentable in view of Lindsey and M. Bartusch, R. H. Mohring and
F. J. Radermacher, “Scheduling Project Networks with Resource Constraints and Time
Windows,” Annals of Operations Research, 16 (1988), pp. 201-240 (Bartusch).
For the reasons that follow, we vacate the examiner’s rejections and remand the
application to the examiner for action consistent with this decision.
B. Discussion
This case is complicated. There are several claims (sixteen independent claims), multiple
rejections and several issues for consideration. Many of the claims, both independent and
dependent, are replete with the word “means.” When a limitation recites the word “means,”
there is a presumption that §112, ¶ 6 applies. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302, 50 USPQ2d 1429, 1435 (Fed. Cir. 1999). Appellants apparently agree that § 112,
¶ 6, applies with respect to the “means” terms (Brief at 12; Reply at 5; Response to 15 June 2006
Order). Yet, based on the record before us, there is no indication that the examiner has
interpreted those claims which recite the word “means” as mandated by § 112, ¶ 6. However, as
2
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007