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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