Appeal No. 2004-1542
Application No. 09/640,335
weather patterns and using the forces to bias the units
toward the supporting surface and in a selected
direction to increase stability of the architecture.
This is so because two structures having the same
structural features will inherently act in the same
manner. Finally, since the applicant has not claimed
any structure that differentiates his architecture from
Frey’s architecture, the two structures will inherently
be capable of functioning in the same manner [answer,
pages 4 and 5].
The examiner seems to have parsed independent claims 1, 6,
11, 18 and 28 into “structural” limitations and “functional”
limitations and found that Frey meets the above noted
“functional” limitations under principles of inherency merely
because Frey’s building meets the “structural” limitations. In
effect, this approach improperly reads the “functional”
limitations out of the claims.
There is, of course, nothing intrinsically wrong with using
functional language in a claim to define something by what it
does rather than by what it is. In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971). As correctly pointed out by
the examiner, the language at issue in claims 1, 6, 11, 18 and 28
is essentially functional in nature. It defines the living units
by what they do. Properly construed, these limitations, while
functional in nature, require the building units to embody
structure which, when subjected to weather forces of predicted
weather patterns, uses such forces to bias the building units in
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