Appeal No. 2005-0980 7
Application No. 09/818,228
being used “without restricting the patient’s spontaneous respiration through the
nasopharynx”.3 Thus, we concur with the examiner that the claimed functional limitation
relating to restricting a patient’s spontaneous respiration does not preclude Lathi’s nasal
catheter. The appellant simply has not demonstrated that the claimed functional language
would have rendered the claimed nasal catheter structurally different from Lathi’s nasal
catheter. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir.
1997)(There is nothing inherently wrong with defining a mechanical or product component
by what it does rather than what it is in drafting patent claims. However, choosing to
define it by what it does (functionally) has some risk. The burden is placed on the
applicant to prove with objective evidence that the prior art product or apparatus does not
necessarily possess the claimed function if claimed and prior art products or apparatuses
reasonably appear to be the same or substantially the same.); In re Casey, 370 F.2d 576,
580, 152 USPQ 235, 238 (CCPA 1967)(A manner in which a claimed apparatus is
intended to be used does not differentiate the claimed apparatus from a prior art apparatus
having the claimed structures); Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. &
Int. 1987).
The appellant argues that Lethi does not teach or suggest a gas source having the
function recited in claim 1, i.e., “delivering a continuous flow of air/oxygen at a rate of
3 Claim 1 on appeal is directed to a nasopharyngeal catheter, not a method of operating or using a
nasopharyngeal catheter. Thus, it is nor important how the prior art nasopharyngeal catheter is employed.
What is important is whether the prior art nasopharyngeal has a structure capable of being operated in the
claimed manner.
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