Appeal No. 2001-2205
Application 09/228,987
relates to an entirely different field of endeavor than that of
the claimed invention and may be directed to an entirely
different problem from the one addressed by appellant in the
present case.
As for appellant's arguments concerning the functional claim
language and the need to consider such language in applying prior
art, we point to the statement by the Court in Schreiber, 128
F.3d 1478, 44 USPQ2d at 1432, that
A patent applicant is free to recite features of an
apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971)
(‘[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what is] in drafting
patent claims.’). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.
As our predecessor court stated in Swinehart, 439 F.2d at
213, 169 USPQ 228:
where the Patent 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 on.
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611
(CCPA 1981); In re Ludtke, 441 F.2d 660, 663-64, 196 USPQ
563, 565-567 (CCPA 1971).
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