Appeal No. 2003-1302
Application 09/035,478
the examiner that the component of Kooji Figure 3 is structurally
identical to that defined in the claims before us on appeal and
is inherently capable of being used as a “preform” in the manner
required in the claims on appeal (e.g., to form a split sleeve
adapter similar to that seen in Figure 1 of Kooji).
As was made clear in In re Schreiber, 44 USPQ2d at 1431, by
choosing to define an element functionally as in appellants’
claims 9, 25 and 26 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 split sleeve component
seen in Figure 3 of Kooji lacks the functionally defined
limitations set forth in claims 9, 25 and 26 on appeal. We
therefore agree with the examiner that the differences in the
intended use of appellants’ split sleeve preform and the split
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007