Appeal 2007-2553
Application 10/367,347
136, 138 (Fed. Cir. 1986). The absence of a disclosure relating to function
does not defeat a finding of anticipation. A patent applicant is free to recite
features of an apparatus either structurally or functionally. Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk.
Where the Examiner has reason to believe that a functional limitation
asserted to be critical for establishing novelty may, in fact, be an inherent
characteristic of the prior art, the burden rests with applicant to prove that
the subject matter shown to be in the prior art does not possess this
characteristic. See In re Schreiber, 128 F.3d 1473, 1478-79, 44 USPQ2d
1429, 1432-33, quoting In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226,
228 (CCPA 1971).
Applying the preceding legal principles to the factual findings in this
record, we determine that the Examiner has established a prima facie case of
anticipation which case has not been adequately rebutted by Appellants’
arguments. As shown by factual findings (1) and (2) listed above, and not
contested by Appellants, Muradov discloses a fuel cell unit (FC 7), a
conversion unit capable of converting hydrocarbons to a hydrogen-
containing fluid stream provided to the fuel cell unit (reactor 1), and a
separation device (GSU 4). Appellants dispute the Examiner’s contention
that cyclone 2 also acts as a separation device (Br. 4-5). We determine that
the Examiner has established a prima facie case of anticipation for several
reasons. First, we determine that the embodiment of Figure 1 (see factual
findings (4) and (7) listed above), includes a fuel cell unit with pure
hydrogen introduced therein (i.e., 99 v.%), where the GSU acts to separate
the HCG from the HDG. Accordingly, every limitation of claim 1 on appeal
is disclosed by the reference if the GSU is a “mass separation device” as
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