Appeal No. 2003-1513
Application No. 09/326,412
very stiff and has nothing to do with preventing folding over of
the expandable envelope.” (Supplemental appeal brief, page 3.)
We find this argument unpersuasive. As we discussed at the
outset, the present specification states that the prevention of
the “folding over” problem is accomplished by making the base
thicker or reinforced relative to the anterior portion. This
structure is precisely what is described in Baker. Accordingly,
the burden of proof was shifted to the applicant to provide
objective evidence establishing that Baker’s reinforcement
member would be incapable of performing the function recited in
appealed claim 19.4 On this point, it is well settled that when
a claimed product reasonably appears to be substantially the
same as a product disclosed in the prior art, the burden of
proof is on the applicant to prove that the prior art product
does not inherently or necessarily possess the characteristics
attributed to the claimed product. Cf. In re Schreiber, 128
F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)
(“[C]hoosing to define an element functionally, i.e., by what it
does, carries with it a risk...[W]here the Patent Office [PTO]
has reason to believe that a functional limitation asserted to
4 Baker teaches that the reinforcement member must be
sufficiently rigid to equalize external forces exerted on the
device and to maintain the intended profile of the device.
(Column 4, lines 52-59.)
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