Appeal No. 2000-0204
Application No. 08/512,068
noted above, we agree with the examiner that element (36)
disclosed by Bolinger is fully responsive to that set forth in
claim 13 on appeal and is inherently capable of being used in
the manner required in the whereby clause of appellant's claim
13, as are the wick holding elements seen Figures 9 and 16 of
Bolinger also.
As was made clear in In re Schreiber, 128 F.3d at 1477,
44 USPQ2d at 1431, by choosing to define an element
functionally as in appellant's whereby clause in claim 13 on
appeal, appellant assumes a risk, that risk being that where
the Patent and Trademark Office 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, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied upon. In the present case, appellant
has provided no evidence to prove that the wick holding member
of Bolinger lacks the functionally defined limitation set
forth in claim 13 on appeal. We therefore agree with the
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