Appeal No. 2002-0962
Application No. 09/017,959
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971) where
the Court stated:
where the Patent 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 on.
In the present case, the examiner’s findings relative to the nature
of the projections of Stevens constitute sound technical reasoning
that establishes the reasonableness of the examiner’s belief that
the functional limitations of claim 17 are inherent characteristics
of the reference device, which reasoning, on the record before us,
stands uncontroverted by appellant.
Appellant also argues (reply brief, page 2) that Stevens does
not inherently disclose appellant’s invention because Stevens does
not teach the result of applying spin on a bowling ball. This
argument fails because, as noted above, the law of anticipation
does not require that the reference “teach” what appellant teaches;
all that is necessary is that the claims “read on” something
disclosed in the reference. Kalman v. Kimberly-Clark Corp., 713
F.2d at 772, 218 USPQ at 789.
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