Appeal No. 2004-1252
Application No. 09/705,710
functional in nature and does not recite the housing or substrate
as an element of the claimed apparatus. The examiner deals with
this functional language by finding that Ragard’s insertion head
100 is inherently capable of use with the specified substrate or
housing and hence meets the lead pusher and lead inserting means
limitations in claims 30, 43 and 44. In the alternative, the
examiner concludes that it would have been obvious to use
Ragard’s insertion head 100 in conjunction with the specified
substrate or housing. In either case, the examiner seems to rely
on the principle that while there is nothing intrinsically wrong
with the use in a claim of functional language to define
something by what it does rather than by what it is, the mere
recitation of a newly discovered function, inherently possessed
by things in the prior art, does not cause a claim drawn to those
things to distinguish over the prior art (In re Swinehart, 439
F.2d 210, 212-213, 169 USPQ 226, 228-29 (CCPA 1971)).
Even if Ragard is assumed to be analogous art relative to
the claimed invention (the appellants urge that it is not), the
examiner’s determination that Ragard’s insertion head 100 is
inherently capable of inserting leads into the sort of housing or
substrate defined in claims 30, 43 and 44 finds no reasonable
support in the fair teachings of the reference. The examiner has
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