Appeal 2007-0879
Application 09/793,209
under the sixth paragraph of 35 U.S.C. § 112” and “there has been no
analysis of the proper scope of [claims 15, 17, 22, through 25] that would
clearly provide the patentable features missing from the references of record,
alone or in combination” and the Examiner has not considered the claims as
required by In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (Br. 18-19).
In the Answer, the Examiner responds to Appellants’ issue by citing
“equivalent means for mixing” in Barbee, stating “[s]upport for this portion
of claims is found in section [0034],” apparently referring to a quote from
the Specification, contending the disclosed structure corresponds to an
equivalent structure taught by Barbee which performs the identical function
in substantially the same way producing substantially the same result
(Answer 4-5). In responding to Appellants’ arguments, the Examiner
contends Barbee, Esler, and DeSisto teach “equivalent means for measuring
the mixture ratio,” stating “[s]upport for this portion of the claims is found in
Applicant’s section [0019]” in connection with a quote from the
Specification (Answer 8; see also 9).
The Examiner does not address Appellants’ contention that the
“means” limitations in claims 15 and 22 are compliant with § 112, sixth
paragraph, or the contention that the “means” limitations have not been
considered under this statutory provision. The Examiner also does not
address Appellants’ “definition of the elements that constituted each of the
specific means for elements of claims 15 and 22” (see Reply Br. 5).
We find the Specification is not formatted with paragraph numbers.
The two passages of the Specification quoted by the Examiner with
reference to “[0034]” and “[0019]” and are found at page 7, lines 26-27, and
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