Appeal No. 2003-1498
Application No. 09/762,000
claim 1 and as required by all appealed claims. Nevertheless, the
Examiner considers Nachbauer to anticipate appealed claim 1 because
“[t]his device [i.e., patentee’s faucet lock] is capable of use
with a “wrist blade” type handle and the side walls of 11,
particularly the front most side wall would inherently meet the
last line of claim 1 [i.e., the previously mentioned function of
regulating the degree of freedom of rotation of the wrist blade
control handle]” (answer, page 4). The Examiner regards Jones as
anticipating appeal claim 1 for the same reason (i.e., “[t]he
capable use here is as set forth supra” (answer, page 4)).
It is well settled that an Examiner must provide some evidence
or scientific reasoning to establish the reasonableness of the
Examiner’s belief that the functional limitation in a rejected
claim is an inherent characteristic of the prior art. Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). Here,
the Examiner has provided absolutely no evidence or scientific
reasoning to establish the reasonableness of his position that
the aforenoted regulating function of appealed claim 1 is an
inherent characteristic of the faucet locks respectively disclosed
in Nachbauer and Jones. Instead, the Examiner’s position that the
prior art faucet locks would inherently possess the capability of
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