Appeal 2007-2589
Application 10/643,521
claims (11 and 12) requires “means for adjustably mounting wheels to the carriage
body so that the wheels can be moved up and down with respect to the carriage
body.”
As set forth in the Manual of Patent Examining Procedure (MPEP)
§ 2181(I) (8th ed., rev. 3, Aug. 2005):
A claim limitation will be interpreted to invoke 35 U.S.C. § 112, sixth
paragraph, if it meets the following 3-prong analysis:
(A) the claim limitations must use the phrase “means for” or “step
for;”
(B) the “means for” or “step for” must be modified by functional
language; and
(C) the phrase “means for” or “step for” must not be modified by
sufficient structure, material or acts for achieving the specified function.
The Examiner states that “the instant application was not examined in light
of the invoking of 35 U.S.C. § 112 6th paragraph and as such, the claims must be
interpreted as broadly as their terms reasonably allow as per MPEP 2111.01” (Ans.
6). The Examiner argues (Ans. 2-3):
MPEP 2181 states that a claim limitation will be presumed to invoke
35 U.S.C. 112, sixth paragraph, if it meets the 3-prong analysis. Claims 11
and 12 do not meet the third prong of this analysis, that being: the phrase
“means for” or “step for” must not be modified by sufficient structure,
material or acts for achieving the specified function. In both independent
claims, the “means for adjustably mounting wheels to the carriage” has
further been modified by acts for achieving the specified function, i.e. “so
that the wheels can be moved up and down”.
The Examiner’s statement that “so that the wheels can be moved up and
down” is an act is incorrect. That phrase does not recite an act of moving the
wheels up and down. Instead, it is part of the recitation of the function of
adjustably mounting wheels to the carriage body so that the wheels can be moved
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Last modified: September 9, 2013