Appeal No. 2005-0912
Application No. 10/233,459
(TOP)/trioctylphosphine oxide (TOPO) capped and ZnS overcoated
CdSe nanocrystals mixed with a block copolymer containing an
oxadiazole group. Contrary to the appellants’ apparent belief
(reply brief filed on Jan. 24, 2005 at 2), these materials
correspond to those described in the present specification as
suitable for the invention recited in the appealed claims.
Under these circumstances, it would reasonably appear that
Mattoussi’s electroluminescent device would inherently or
necessarily possess the same characteristic recited in appealed
claim 1. The appellants did not meet their burden of proving
otherwise. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997) (“[C]hoosing to define an element
functionally, i.e., by what it does, carries with it a
risk...[W]here 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.”); In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990)(“[W]e conclude that the Board
correctly found that the virtual identity of monomers and
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