Appeal No. 2004-2059
Application No. 10/278,725
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, 58 C.C.P.A.
1159, 441 F.2d 660, 663-64, 169 USPQ 563, 565-67 (CCPA
1971).
In this case, as in Schreiber, we have considered the
functional limitations asserted by appellant as distinguishing of
Boyd and agree with the examiner that these limitations relate to
functional characteristics and intended use of the claimed
device, that they do not lend patentable weight to the presently
claimed subject matter, and that the limitations in question are
in fact inherent characteristics of the floor panel of Boyd.
Thus, we consider that the examiner has established a prima facie
case of anticipation that appellant has not overcome by
convincing argument or evidence to the contrary.
In light of the above, we shall sustain the rejection of
claim 1 as being anticipated by Boyd. We shall also sustain the
anticipation rejection of claims 2, 5-11, 14, 16-18 and 22 as
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