Appeal 2007-0874
Application 10/130,255
Any inquiry into the propriety of the Examiner’s § 102(b) rejection requires
us to determine the scope of the claims on appeal. Se, e.g., Gechter v.
Davidson, 116 F.3d 1454, 1460 n.3, 43 USPQ2d 1030, 1035 n.3 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994).
Here, the Appellants set forth, inter alia, means-plus-function
limitations in independent claims 10, 12, and 16. Sage Prods. Inc. v. Devon
Indus., Inc., 126 F.3d 1420, 1427, 44 USPQ2d 1103, 1109 (Fed. Cir.
1997)(The use of the term “means” raises a presumption that the means-
plus-function limitation is intended.); Ex parte Klumb, 159 USPQ 694, 695
(Bd. Pat. App. & Int. 1967)(The manner in which a “means-plus-function” is
expressed, either by a function followed by the term “means” or by the term
“means for” followed by a function, is unimportant so long as the modifier
of that term specifies a function to be performed.). The means-plus-function
limitations in question are “plural thickness adjusting means for adjusting
the thickness of the sheet” and “a specific thickness adjusting means” in
claims 10, 12, and 16. These means-plus-function limitations must be
interpreted as the corresponding structure described in the Specification and
equivalents thereof consistent with 35 U.S.C. § 112, 6th paragraph. See, e.g.,
In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994)(in banc). Indeed, according to 37 C.F.R. § 41.37(c)(v)(2004), the
Appellants are required to identify the specific structure in the Specification
corresponding to the claimed means-plus-function limitations in the
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