Appeal No. 2002-2336
Application 09/081,765
As was made clear in In re Schreiber, at 44 USPQ2d ..., by
choosing to define an element functionally as in appellants’
claims on appeal, appellants assume 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 appellants to prove that the subject matter
shown to be in the prior art does not possess the characteristic
relied upon. In the present case, appellants have provided no
evidence to prove that the interconnection at shaft passage (10)
in Franke lacks the functionally defined limitation set forth in
the claims on appeal and is therefore incapable of producing and
transmitting a flux of force.
For the above reasons, we will sustain the examiner’s
rejection of representative claim 1 under 35 U.S.C. § 102(e) as
being anticipated by Franke. In light of appellants’ grouping of
claims on page 6 of the brief, it follows that the examiner’s
rejection of claims 8, 11, 16, 17 and 20 under 35 U.S.C. § 102(e)
will also be sustained.
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