Appeal No. 1996-3547 Page 9
Application No. 08/089,854
shaped so as to be suitable for use in a human or animal body, as
a cosmetic nose implant, for example (column 2, lines 33-40).
Moreover, Jones specifically discloses a disc shape (Example 4,
for example) that is sized for implantation in the back of a rat.
Compare Jones with, e.g. claim 90 reciting a disk.
Where, as here, there is a reasonable basis to believe that
the critical function (suitable for bone contact and binding)
that is alleged to establish novelty in the claimed subject
matter is, in fact, a characteristic of the prior art device as
urged by the examiner, it is incumbent upon appellants to prove
that the prior art device does not in fact possess the
characteristics relied on. See, e.g., In re Schreiber, 128 F.3d
1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Spada,
911 F.2d 705, 708-09, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The
present record is devoid of such proof.
In light of the above, we determine that the examiner has
established that the subject matter of claims 13-19 and 68-106 is
unpatentable under 35 U.S.C. § 102/§ 103.
In addition, we agree with the examiner that even if the
claimed prosthetic device differs from the device of Jones by
virtue of the claimed functional language, a skilled artisan
would have found the fashioning of a bone binding shape for the
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007