Appeal No. 2001-1723
Application No. 09/112,263
Where the [examiner] 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, [he or she] 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.
Here, we find that the claimed and prior art substrates appear to be identical or substantially
identical. Thus, we determine that the examiner has reason to believe that the claimed functional
limitation is an inherent characteristic of the prior art substrate. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). The appellants, however, do no provide any
evidence to show that the prior art substrate does not possess the claimed functional limitation. See
the Brief in its entirety. Nor do we find any evidence in the record showing that the claimed
functional limitation renders the structure and/or composition of the claimed substrate patentably
different from those of the prior art substrate. Thus, on this record, we determine that the claimed
functional limitation does not distinguish the claimed substrate from the prior art substrate.
Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432.
In any event, as properly found by the examiner at page 5 of the Supplemental Answer,
Hotaling ‘364 is directed to lightweight solar cells that may have various types of
electrodes or contact mounted in contact with the thin glass sheet (column 5, lines
67 - column 6, line 14). This reads on a large area electronic device having thin film circuit
elements.
We also observe that the appellants have not specifically challenged this finding. Thus, we
conclude that Hotaling ‘364 not only describes the claimed functional limitation recited in claim 1,
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