Appeal 2007-2045
Application 10/204,670
carbon ratio of the end face of a carbon nanotube is a result-effective
variable that can be optimized by routine experimentation. (Br. 10). We
disagree. Both Hiura and Rinzler indicate that processes for opening the tips
are readily controllable (see Findings of Fact 6 & 11). Moreover, we are in
agreement with the Examiner’s unrefuted finding that one of ordinary skill
in the art would have been motivated to optimize oxygen atom content of the
nanotubes to obtain optimum electrical properties (Answer 4).
Claims 5, 46-48, and 54 differ from claims 1-4 and 40-45 in that they
include means-plus-function language. In particular, claim 5 recites
“electric field applying means for applying an electric field.” Therefore, the
strictures of 35 U.S.C. § 112, sixth paragraph, apply, see Texas Digital Sys.,
Inc. v. Telegenx, Inc., 308 F.3d 1193, 1208, 64 USPQ2d 1812, 1822-23
(Fed. Cir 2002), and the “electric field applying means” must be limited to
the "corresponding structure" disclosed in the written description in the
Specification and "equivalents" thereof. In re Donaldson Co., 16 F.3d 1189,
1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994) ("[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.").
In this case, a proper means-plus-function analysis required a comparison of
the structure described on page 116, lines 3-8 and Figure 15 of the
Specification (see Br. 8-9) to the structure described in Shih, to determine if
Shih discloses identical or equivalent structure.
The Answer does not identify any particular structure from the
Specification corresponding to the "electric field applying means" limitation
(see Answer 5). Therefore, the Examiner did not interpret the "means for"
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