Appeal No. 2004-2059
Application No. 10/278,725
small cross-section to allow the panel to flex (column 3, lines
20-23), and the showing in Boyd’s drawing figures of elements (3)
as being of considerably smaller thickness than adjacent portions
of the floor panel, the examiner’s finding that the above noted
non-structural, functional limitations of claim 1 are inherent in
Boyd is well founded and not based on speculation. Stated
differently, the description provided in Boyd for the connecting
elements (3) constitutes evidence that supports the examiner’s
reasonable determination that Boyd’s elements (3) are capable of
being severed to allow removal of a selected portion of decking
tile, such that the “membrane adapted to be severable” limitation
of claim 1 “reads on” Boyd’s elements (3).
As to appellant’s argument in the brief to the effect that
the examiner’s treatment of the functional “adapted to be
severable” limitation of claim 1 is inconsistent with the law of
inherency, we point to the statement by the Court in Schreiber,
128 F.3d at 1478, 44 USPQ2d at 1432, that
[a] patent applicant is free to recite features of
an apparatus either structurally or functionally. See
In re Swinehart, 58 C.C.P.A. 1027, 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 by what it is] in drafting patent
claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a
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