Appeal No. 1996-1309
Application 08/053,174
the Examiner has shown that Kato teaches all the structural
limitations recited in Appellants' claim 21. Our reviewing
court states:
[I]t is elementary that the mere recitation
of a newly discovered function or property,
inherently possessed by things in the prior
art, does not cause a claim drawn to those
things to distinguish over the prior art.
Additionally, where the Patent Office has
reason to believe that a functional
limitation asserted to be critical for
establishing novelty in the claimed subject
matter may, in fact, be an inherent
characteristic of the prior art, it
possesses the authority to require the
applicant to prove that the subject matter
shown to be in the prior art does not
possess the characteristic relied on.
In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA
1971),
citing In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226,
229
(CCPA 1971).
Appellants' argument that Kato does not expressly
teach that the amount of lift generated within the data
storage region is less than the amount of lift generated
within the idle region is an inherent property possessed by
the structure set forth in Kato. We find that the Examiner
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