Appeal No. 2002-1704
Application No. 09/240,313
where the bolt (1) is not threading into tapped hole (18)
properly.
As was made clear in In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997), by choosing to define an
element functionally as in appellant's claims 14 and 22 on
appeal, appellant assumes a risk, that risk being that where the
U.S. Patent and Trademark 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 upon. In the present case, appellant has
provided no evidence to prove that the teeth (2) in the wrenching
system of Whittle are incapable of applying some level of force
to loosen the bolt if the bolt were not tightened down
completely.
An additional point appellant seems to have overlooked is
that claims 14 and 22 on appeal are drafted in an open
"comprising" format and thus do not preclude the presence of an
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