Appeal No. 2006-1534
Application No. 09/829,007
Claims 1, 4-8, 10, 12-15, 16-18, and 20-28 rejected under 35 U.S.C. § 102(e) as
being unpatentable as anticipated by Finkelstein.
We note that the appellants argue claims 1, 4, 5, 12-15 and 22 as a group.
Accordingly, we select claim 1 as representative of the group.
The appellants argue that claim 1 contains a means plus function limitation,
namely “means for questioning the user regarding the patient,” that must be construed
according to 35 U.S.C. § 112, sixth paragraph. The appellants then argue that such a
construction must necessarily limit the questioning to a single setting. The appellants
then provide several examples of where the specification supports this limitation that
suggest that the questioning is done in a single setting, pointing particularly to
paragraphs 11, 12, 51 and 57, and to Figs. 5-8. [See Brief at p. 7]
We note that paragraphs 11, 12 and 57 do indeed support the claim limitation of
questioning the user, but mention no particular frequency or time span, or whether this
occurs in a single or over multiple settings. Of greater pertinence is paragraph 51, that
again supports the activity of questioning the user, but further provides evidence that
such questioning might occur over multiple settings by saving questions with the phrase
that one of the steps “is temporarily storing the series of answers, although this step
may be omitted or may involve storing the answers for use at a later time.”
Also, we note that in construing means plus function claim limitations, the statute
does not “permit incorporation of structure from the written description beyond that
necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem.
Co., Inc., 194 F.3d 1250, 52 U.S.P.Q.2D (BNA) 1258 (Fed. Cir. 1999). Any limitation
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