Appeal 2007-0879
Application 09/793,209
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 recited in a claim. [Citations omitted.]”
Donaldson, 16 F.3d at 1194-95, 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” claim language in
order to establish a prima facie case of obviousness over the applied prior art
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, we agree with Appellants that the Examiner has not interpreted
the “means” language in claims 15, 17, 18, and 22 through 25 with respect to
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