Appeal No. 2007-0599
Application No. 10/822,054
no evidence of what one skilled in the art would consider to be a high ratio.”
(Reply Br. 6.)
We find that the Examiner has the better argument. Claim 5 depends
on claim 2 which characterizes the channel walls as “cooling fins.” Thus,
the channel walls must be sufficiently “high” to perform the “cooling”
function. Because Doll’s fins serve this same purpose (col. 1, ll. 59-62; col.
2, ll. 54-59; col. 4, ll. 27-33), it was reasonable for the Examiner to presume
they have “a high fluid channel aspect ratio,” shifting the burden to
Appellants to show otherwise.
When the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing patentability based on
inherency under 35 U.S.C. § 102 or on prima facie obviousness under
35 U.S.C. § 103, “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.” In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 229 (CCPA 1971); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977). Because Appellants have not rebutted the Examiner’s
reasonable presumption, we affirm the rejection of claims 5, 11, and 17.
Claims 6, 12, and 18
Claim 6 further limits claim 1 by requiring that “the fluid inlet and
fluid outlet are co-located on the enclosure.” The Examiner interprets
“co-located” to encompass positioning the inlet and outlet on the same plane
(Answer 5). The Examiner finds that Doll shows the fluid inlet and outlet on
the same plane, meeting the claimed limitation (id. at 3.). Appellants argue
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