Appeal No. 1998-0531
Application 08/464,489
[to be] given patentable weight since it is found in the
preamble of the claim” is inappropriate.
Concerning functional language of the type found in the
preamble of claim 28 and the weight it is to be given, we
point to the statement by the Court in In re Schreiber, 128
F.3d 1473, 1478, 44 USPQ 1429, 1432 (Fed. Cir. 1997) that
[a] patent applicant is free to recite features
of an apparatus either structurally or functionally.
See In re Swinehart, 439 F.2d 210, 212, 169 USPQ
226, 228 (CCPA 1971) (“[T]here is nothing
intrinsically wrong with [defining something by what
it does rather than what it is] in drafting patent
claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it
a risk. As our predecessor court stated in
Swinehart, 439 F.2d at 213, 169 USPQ at 228:
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.
See also In re Hallman, 655 F.2d 212, 215, 210
USPQ 609, 611 (CCPA 1981); In re Ludtke, 441 F.2d
660, 663-64, 169 USPQ 563, 565-67 (CCPA 1971).
Feldman, the examiner’s evidence of anticipation,
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