Appeal 2006-2721
Application 09/579,938
In order to establish a prima facie case of anticipation and of
obviousness of claim 1 and a prima facie case of obviousness of claim 5, the
Examiner must first interpret the “means for” language because all of the
claim limitations must be considered. See, e.g., In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering
grounds of rejection “every limitation in the claim must be given effect
rather than considering one in isolation from the others.”); cf. Donaldson, 16
F.3d at 1195-97, 29 USPQ2d at 1850-52.
Here, the Examiner has not interpreted the “means for” language in
claims 1 and 5 with respect to the “corresponding structure” in the
Specification and “equivalents” thereof in a manner consistent with statutory
requirements necessary to establish a prima facie case of anticipation of
claim 1 and claims 4 and 29 dependent thereon, and a prima facie case of
obviousness of claim 1 and claims 4 through 6 and 29 dependent thereon.
Accordingly, in the absence of a prima facie case of anticipation and
of obviousness in these respects, we reverse the grounds of rejection of
claims 1, 4 through 6 and 29.
Claim 3, dependent on claim 1, specifies “the means for dispensing
paint includes a spigot assembly.” The term “spigot assembly” provides
structure for the dispensing function specified in claim 1 of any assembly of
any parts which together function as a spigot or faucet, that is, regulate the
flow of a liquid. The claim term “dispensing mechanism” in claim 7 and
other independent claims, includes any manner of spigot assembly. Indeed,
also In re Morris, 127 F.3d 1048, 1055-56, 44 USPQ2d 1023, 1028 (Fed.
Cir. 1997) (explaining Donaldson).
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