Appeal No. 2006-0696
Application 90/005,546
explained in In re Donaldson Co., 16 F.3d 1195, 1189, 29 USPQ2d 1850, 1845 (Fed. Cir. 1994)
(in banc),
[T]he “broadest reasonable interpretation” that an examiner may give means-plus-
function language is that statutorily mandated in paragraph six. Accordingly, the PTO
may not disregard the structure disclosed in the specification corresponding to such
language when rendering a patentability determination.
The examiner must determine the meaning of the recited function and then identify the
structures, materials, and acts described in the specification, which correspond to a particular
means for performing that function. Once the claimed subject matter has been identified, the
prior art can be analyzed to determine whether the function is performed in the prior art reference
by the same means or equivalents of the means. The construction of claim limitations cannot be
made in a vacuum. Although extraneous limitations should not be read into the claims from the
specification, E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433,
7 USPQ2d 1129, 1131 (Fed. Cir. 1988), claim limitations are always properly interpreted in light
of the specification and prosecution history as they would be understood by one of ordinary skill
in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir.
2005); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868, 228 USPQ 90, 94 (Fed. Cir. 1985).
Based on the record before us, it is apparent that the examiner did not construe the
functional language associated with the various means limitations. Nor has the examiner made a
determination of the structure disclosed in the specification corresponding to the various recited
means. For example, the examiner disregarded appellants’ argument that the means for
“controlling”, “scheduling”, and “comparing” recited in several of the claims are all performed
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