Ex Parte REEDY - Page 9




              Appeal No. 2002-1645                                                                Page 9                
              Application No. 09/281,553                                                                                


              and second side portions and having a back support (Engelhart's rest 38) extending                        
              upwardly to an elevation above said arm supports and adapted to brace the upper back                      
              of a standing patient (Engelhart's rest 38 does extend upwardly to an elevation above                     
              the grips 32 and is adapted to  (i.e., capable of providing) brace the upper back of a                    
              suitably sized standing patient (e.g., a patient smaller than the patient depicted in                     
              Figure 2 of Engelhart)); said arm supports and said back support cooperating to support                   
              the patient's arms and upper body when the standing patient is positioned within said                     
              interior space in the upright position (Engelhart's rest 38 and grips 32 are capable of                   
              cooperating to support the arms and upper body of a suitably sized standing patient                       
              (e.g., a patient smaller than the patient depicted in Figure 2 of Engelhart) when the                     
              suitably sized standing patient is positioned within the interior space in an upright                     
              position).                                                                                                


                     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 it is] in drafting patent claims.").  Yet, choosing to define an element                 
              functionally, i.e., by what it does, carries with it a risk.  As the court stated in Swinehart,           
              439 F.2d at 213, 169 USPQ at 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,               







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