Appeal No. 96-3146
Application 07/986,489
operation of creating an image, [brief, pages 5-8].
The examiner contends that as long as the claimed
structure is shown by prior art, the rejection is valid.
According to the examiner, the recitation of a function in a
claim, without claiming the function as the "means" for the
specified function, does not carry patentable weight. Also,
the examiner is of the belief that it is equally without
patentable weight when the same structure is labeled by a
different name. Thus the examiner points to the structure of
the write unit [emphasis ours], 47, of Ragland and identifies
56 and 59 of Ragland as the two claimed electrodes, [answer,
pages 4-7, supplemental answer, page 5].
The appellants argue that there is no requirement under
the statute that, to give a functional recitation patentable
weight, it must be expressed as a means for performing the
specified function, [reply brief, page 2].
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
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