Appeal No. 2006-1211
Application 10/277,697
structure “zones of reduced thickness” and equivalent structure, and claim 5 specifies that this
term can separately and severally include the structure “hole” and any other additional structure.
Accordingly, upon further prosecution of the appealed claims subsequent to the
disposition of this appeal, the examiner should consider whether claim 5 complies with
35 U.S.C. § 112, second paragraph. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971); cf. Donaldson Co., 16 F.3d at 1194-95, 29 USPQ2d at 1850 (“[I]f one
employs means-plus-function language in a claim, one must set forth in the specification an
adequate disclosure showing what is meant by that language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to particularly point out and distinctly
claim the invention as required by the second paragraph of section 112.”).
Reversed
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