Appeal No. 2002-1214
Application No. 09/062,046
are free to recite features of an apparatus either structurally or functionally. See In
re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971). However,
defining an element functionally carries with it a risk. See Schreiber, 128 F.3d at
1478, 44 USPQ2d at 1432, citing Swinehart, “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.”
As stated above, the Examiner has found that the apparatus of Miller has the
same structural elements as the claimed invention. Specifically, the Examiner found
that Miller includes upper and lower members that have at least one end member
and a pressure member. These structural elements are used to apply pressure on
work elements. (Miller, col. 1). Appellants have not challenged the Examiner’s
factual determinations. Accordingly, we determine that the Examiner has met the
initial burden of establishing a prima facie case of unpatentability under section
102. Therefore, the burden has been shifted to Appellants to show that the claimed
product differs substantially from the product disclosed by Miller. See In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990); and In re Best, 562
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