Appeal No. 95-1641
Application No. 07/825,927
suitability of mixing means for high viscosity solutions
causes the difference between the structures of the mixing
means described in Witte and the claimed mixing means.
Thus, having considered all of the evidence of record, it
is our determination that the evidence of obviousness, on
balance, outweighs the evidence of nonobviousness proffered by
appellants. Hence, we agree with the examiner that the
claimed subject matter as a whole would have been obvious to
one of ordinary skill in the art in view of the applied prior
art. Accordingly, we affirm the examiner’s decision rejecting
claims 1 through 16 under 35 U.S.C. § 103.
As a final point, we note that apparatus claim 18 merely
defines a mixer in a functional term. If the mixer described
in Witte has the same general shape as appellants’ mixer or is
capable of operating in the claimed manner, the burden shifts
to appellants to show that Witte’s mixer does not inherently
possess the functionally defined limitation of their claims.
See, e.g., In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997); In re Casey, 370 F.2d 576, 580,
152 USPQ 235, 238 (CCPA 1967). Upon return of this
17
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007