Appeal No. 2001-2205
Application 09/228,987
harness/garment (4)) that is structurally the same as that
broadly defined in the claims on appeal and which clearly has the
capability of being used in the manner set forth in those claims.
Thus, appellant’s arguments are not persuasive of error in the
examiner’s rejections of claims 1 and 5 through 7 on appeal.
Accordingly, the rejection of claims 6 and 7 under 35 U.S.C.
§ 103 based on Johnson will be sustained.
As was made clear in In re Schreiber, 128 F.3d at 1477, 44
USPQ2d at 1431, by choosing to define an element functionally as
in appellant’s claim 1 on appeal, appellant assumes a risk, that
risk being that where the Patent and Trademark 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 upon. In the present case, appellant
has provided no evidence to prove that the device in Johnson is
not capable of being used in the manner set forth in claim 1 on
appeal.
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