2184

2184 Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made [R-2]

I. < TEACHINGS IN APPLICANT'S SPECIFICATION

NOLL

Our reviewing court has held that a “programmed machine is structurally different from a machine without that program.” In re Noll, 545 F.2d 141, 149 (CCPA 1976)

II. < FACTORS TO BE CONSIDERED IN DECIDING EQUIVALENCE

IMS

See IMS Technology, Inc. v. Haas Automation, Inc., 206 F. 3d 1422, 1434 (Fed. Cir. 2000)

(The phrase "control apparatus" in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention. Its use does not limit the claims, as Haas contends, to a control apparatus that is separate from the machine tool. The claim is infringed by any apparatus encompassing all of the limitations in the body of the claim.)

ODETICS

In the Request, Appellants allege that, in view of Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999), the Decision improperly found “Froese’s algorithms are only similar in function to Appellant’s special purpose computer and are not identical in function.” (Request 4.) (Emphasis in original.)

In Odetics, the Federal Circuit instructs that a limitation recited in “means-plus function” format covers only structure which performs the identical function recited in the limitation and which is identical or equivalent to the corresponding structure described in the specification. Odetics, 185 F.3d at 1267. Equivalency is an issue of fact determined by assessing whether the prior art structure performs the recited function in substantially the same way as the corresponding structure so as to produce substantially the same result. Id.

III. < MERE ALLEGATIONS OF NONEQUIVALENCE ARE NOT SUFFICIENT