Appeal No. 2002-0962
Application No. 09/017,959
Concerning the functional limitations argued by appellant, as
stated by the Court in Schreiber, 128 F.3d at 1478, 44 USPQ2d at
1432, a patent applicant is free to recite features of an apparatus
either structurally or functionally, but choosing to define an
element functionally, i.e., by what it does, carries with it the
risk of having the functionally recited element asserted to be
critical for establishing novelty to be an inherent characteristic
of the prior art. In this case, as in Schreiber, we have
considered the functional limitations of the claims on appeal
argued by appellant4 and agree with the examiner that they do not
lend patentable weight to the presently claimed subject matter and
that such limitations are in fact inherent characteristics of the
device of Stevens.
Finally, appellant argues (main brief, page 4; reply brief,
page 2) that the disclosure of Stevens is not sufficient to have
placed the claimed invention in possession of a person of ordinary
skill in the art. We do not agree, since we consider that Stevens
would put one of ordinary skill in possession of the structure
recited in, for example, claim 17, which is all that is required
4For example, the requirement of claim 17 that the tips of
the projections define a curve which has a curvature
substantially like a curvature of the bowling ball when force is
exerted by the bowler on the ball.
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