Appeal 2006-3206
Application 09/550,276
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 at 1055-56,
44 USPQ2d at 1028 (explaining Donaldson).
Thus, the Examiner must first interpret the “means for” claim
language as well as the effect thereon of the terms “adapted,” “comprising,”
and “further comprising” in order to establish a prima facie case of
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