Appeal No. 2005-0070
Application No. 09/885,102
apparatus claim is being considered. See MPEP 2114" (paragraph
bridging pages 7 and 8 of Answer). However, it is fundamental
that each claim limitation must be given weight and consideration
in determining patentability, whether under § 102 or § 103.
Although a claimed apparatus cannot be distinguished over a prior
art apparatus based on how the claimed apparatus functions, a
functional limitation may impart structure to a claimed
apparatus, and it is incumbent upon the examiner to demonstrate
that a prior art apparatus is capable of performing the claimed
function. In the present case, the examiner has not met the
burden of demonstrating that the ozone generators of the cited
prior art have a structure that has the capability of producing
gas flow in a direction transverse to the longitudinal direction
of the parallel grooves.
The examiner also states that "in the reference of Shinjo,
Fig. 6 is the same as Fig. 11 in the instant application, which
illustrates that the gas flows in a direction parallel with or in
a longitudinal direction of the grooves" (page 8 of Answer,
second paragraph). However, the examiner's reasoning is flawed
inasmuch as Fig. 11 of the present application is a depiction of
the prior art, not the presently claimed ozone generator.
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