Appeal No. 2003-0587
Application No. 09/533,514
Although it is true that none of the patents applied by the
examiner against claim 23 mentions decelerating the lift table
therein as it approaches its lowered position, we nonetheless
agree with the examiner that such deceleration must inherently
occur in order for a moving lift table to come to a stop at the
lowered position. As was made clear in In re Schreiber, 128 F.3d
1473,1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997), by choosing to
broadly define an element functionally as in appellants’ claim 23
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 applicants 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 apparatus or machine in each of
Westerling, Raudat, Wayne and Golantsev is not capable of
functioning in the manner set forth in claim 23 on appeal.
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