Appeal No. 2004-1235
Application No. 09/845,643
The appellant defines the size of his golf ball marker
holder or the gap between their generally U-shape golf ball
marker holder in terms of a function, i.e., capable of being
attached to a shoe, in claims 1, 13 and 17. The appellant then
argues that the golf accessory caddy (10) described in Giglio is
not sized or shaped for attachment to a shoe. We do not agree.
As stated in In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997):
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 our
predecessor court 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. See also in re
Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611
(CCPA 1981); In re Ludtke, . . . 441 F.2d
660, 663-64, 169 USPQ 563, 565-67 (CCPA
1971).
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