Appeal No. 1999-0602
Application 08/469,393
believes that the claimed sensitivity is achieved based upon how it is done "in the
specification." We note, however, that no structural recitations are recited in claim 15 on
the basis of what is actually disclosed in the specification to achieve this sensitivity. We
will not import into claim 15 any structural means to achieve the claim sensitivity that are
not specifically recited in the claim itself. The claim is essentially a functional recitation
with very little if any structure to support the claimed recitation of function.
Our reviewing court has stated on more than one occasion:
[I]t is elementary that the mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a
claim drawn to those things to distinguish over the prior art. Additionally,
where the Patent Office has reason to believe that a functional limitation
asserted to be critical for establishing novelly in 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.
See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971); In re Swinehart,
439 F.2d 210, 169 USPQ 226 (CCPA 1971). We do not understand later case law to
have changed these considerations. Moreover, appellant has presented no evidence in
the brief and reply brief to obviate the examiner’s conclusion of inherency of the functional
limitation argued such as to persuade us the claim is patentable. What evidence we noted
in the specification as filed at page 12 does not support appellant’s conclusion either.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007