Appeal No. 2004-0581
Application No. 09/041,105
claimed device adequately evinces the reasonableness of the
examiner’s belief that the functional limitation of claim 1 is an
inherent characteristic of the prior art under consideration.
See Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int.
1986).
We here remind the appellants that, while they are free to
define their semiconductor device by what it does rather than by
what it is (In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228
(CCPA 1971)), such a claim drafting technique carries the risk
that the claim will not distinguish over the applied prior art.
Schreiber, 128 F.3d at 1477-78, 44 USPQ2d at 1432. This is
because of the long recognized authority possessed by the Patent
and Trademark Office, under circumstances of the type before us
in this appeal, to require an applicant to prove that the subject
matter shown to be in the prior art does not actually possess the
functional characteristic recited in the claim. Id. Moreover,
whether the rejection is based on “inherency” under 35 U.S.C.
§ 102 or on “prima facie obviousness” under 35 U.S.C. § 103, the
burden of proof is the same, and its fairness is evidenced by the
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. See In re
Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433-34 (CCPA 1977).
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