Appellant prevails in Ex parte Karau

The appellant prevailed in Ex parte Karau with PTAB noting:

See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has
the initial duty of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis)

As to 112 P 6:


In other
words, in order to meet a “means plus function” limitation, the prior art must
(1) perform the identical function recited in the means limitation and (2)
perform that function using the structure disclosed in the specification or an
equivalent structure. Cf. Carroll Touch Inc. v. Electro Mechanical Sys. Inc.,
15 F.3d 1573, 1578 (Fed. Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993); Johnston v. IVAC Corp., 885
F.2d 1574, 1580 (Fed. Cir. 1989). (...)

The Examiner is relying on an incorrect standard with respect to the
means-plus-function language of claim 25. Whether the prior art structure is
capable of performing the intended use is not the standard for a means-plus function
limitation. Rather, as stated supra, in order to meet a means plus
function” limitation, the prior art must perform the identical function recited
in the means limitation.