Ex Parte Brown et al - Page 7




              Appeal No. 2004-1194                                                                Page 7                
              Application No. 09/580,880                                                                                


              (answer, pp. 3-6) that Bobkowicz's rotatable grooved consolidating roll 25 would be                       
              capable of being adaptable to (1) rotate a thin disk as recited in claims 16 and 23;                      
              (2) contact an edge of the thin disk  in the groove as recited in claims 16 and 23;                       
              (3) reduce a probability of trapping fluid between the thin disk and the roller as recited in             
              claim 16; and (4) reduce slippage of the thin disk relative to the roller as recited in claim             
              23.                                                                                                       


                     We find that the appellants' argument that the previously-noted functional                         
              limitations of claims 16 and 23 positively limit the claimed invention, rather than reciting              
              an intended use, to be unpersuasive for the following reasons.                                            


                     A patent applicant is free to recite features of an apparatus either structurally or               
              functionally.  See In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA                            
              1971) ("[T]here is nothing intrinsically wrong with [defining  something by what it does                  
              rather than what it is] in drafting patent claims.").  Yet, choosing to define an element                 
              functionally, i.e., by what it does, carries with it a risk.  As stated in Swinehart, 439 F.2d            
              at 213, 169 USPQ at 228:                                                                                  
                     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.                                                     







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