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 2Page: Previous 1 2 3 Next
Last modified: September 9, 2013