Appeal 2006-0931
Application 10/312,054
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997):
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.
Here, the Examiner has reason to believe that the cation- exchangers
described in Carbonell and Berglund are capable of performing the claimed
functions. (See the Answer at 3-8.) The Examiner has found, and the Appellants
have not disputed, that the cation-exchangers described in Carbonell and Berglund
have the same chemical structure and utility (used in the claimed method) as the
cation-exchanger recited in, for example, the Appellants’ dependent claim 5.
(Compare the Answer at 3-8 with Br. at 3-11.) As also undisputed by the
Appellants, Carbonell teaches that its cation-exchanger has an “extraordinary high
capacity.”
5
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