Appeal No. 2004-0917
Application No. 09/684,210
housing by trapping the connecting block between the engagement
device and the housing.” (Column 2, lines 52-61.)
Given the structural and functional similarities between
the appellants’ recited alignment sleeve 60 and the engagement
device recited in Pickett’s claims, it would reasonably appear
that Pickett’s patented engagement device would necessarily or
inherently perform the same alignment function recited in
appealed claim 1. 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 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.”); accord In re Fitzgerald, 619 F.2d
67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Whether the
rejection is based on inherency under 35 U.S.C. § 102 or on
obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
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