Appeal No. 2003-0550
Application No. 09/580,411
structural features of the connection set forth in claim 1 on
appeal and is inherently capable of being used in the manner set
forth in claim 1 to permit relative lateral movement of each die
cutter unit (14) relative to the base member (12) and relative to
each other through a range of 360 degrees.
As was made clear in In re Schreiber, 128 F.3d at 1477, 44
USPQ2d at 1431, by choosing to define an element functionally as
in appellant's claim 1 on appeal, appellant assumes a risk, that
risk being that where the 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 connection in Carll is
not capable of the use asserted by the examiner. We therefore
are constrained to agree with the examiner that the differences
in the intended use of the connector seen in Carll and
appellant's claimed connector do not patentably distinguish
88
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007