Appeal No. 95-4237
Application 07/887,002
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981). We are mindful that there is a line of cases
represented by In re Swinehart, 439 F.2d 210, 213, 169 USPQ
226, 229 (CCPA 1971) which indicates that where an examiner
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, the examiner possesses the authority to require an
applicant to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.
Nevertheless, before shifting the burden to appellant, the
examiner must provide some evidence or scientific reasoning to
establish the reasonableness of the examiner’s belief that the
functional limitation is an inherent characteristic of the
prior art. In the case before us, no such evidence or
reasoning has been set forward with respect to Anxionnaz,
Miller or Eknes.
Anxionnaz pertains to a device for preventing the
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007