Appeal 2007-1098
Application 10/026,059
1 In the wake of Halliburton, Congress enacted 35 U.S.C. § 112, sixth
2 paragraph, to permit the use of purely functional means-plus-function claim
3 language, but expressly limited the coverage of such functional language to only
4 the corresponding structure, materials, and acts disclosed in the specification and
5 equivalents thereof. In Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580,
6 1582, 39 USPQ2d 1783, 1785 (Fed. Cir. 1996), the Court of Appeals for the
7 Federal Circuit explained:
8 As this court has observed, “[t]he record is clear on why
9 paragraph six was enacted.” In re Donaldson Co., 16 F.3d 1189,
10 1194, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (in banc). In
11 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ
12 175 (1946), the Supreme Court held invalid a claim that was drafted
13 in means-plus-function fashion. Congress enacted paragraph six,
14 originally paragraph three, to overrule that holding. In place of the
15 Halliburton rule, Congress adopted a compromise solution, one that
16 had support in the pre-Halliburton case law: Congress permitted the
17 use of purely functional language in claims, but it limited the breadth
18 of such claim language by restricting its scope to the structure
19 disclosed in the specification and equivalents thereof. (Citations
20 omitted.)
21
22 Accordingly, the above-quoted functional clauses of claims 1 and 15 violate
23 the prohibition against functional claiming and thus would render claims 1 and 15
24 unpatentable under the principles expressed by the Supreme Court in Halliburton,
25 supra, unless the recitations are means-plus-function clauses under 35 U.S.C.
26 § 112, sixth paragraph. Here, we do construe them as such. Each clause is entirely
27 functional, without recitation of any structure. The claim element is precisely
28 expressed simply as some means, whatever means, for performing a function, only
29 without using the word “means.” The sixth paragraph of 35 U.S.C. § 112 is not so
30 rigid as to require literal usage of the word “means” to invoke its application. See
31 Greenberg, 91 F.3d at 1584, 39 USPQ2d at 1786.
6
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