Appeal No. 2005-1117
Application 10/078,043
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported finding advanced by the examiner that as a matter of fact, prima
facie, appealed claims 1 and 11 are anticipated by Eckhouse. In view of the established prima
facie case of anticipation, we again consider the record as a whole with respect to this ground of
rejection in light of appellants’ rebuttal arguments in the brief. See generally, In re Spada,
911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3. (Fed. Cir. 1990).
Appellants submit that the requirement of claim 1 that “at least part of said apparatus is
adapted for placement proximate to the in-vivo location of said pathogen, wherein said in-vivo
location of said pathogen is a plant or plant parts” is a functional limitation that must be
considered as limiting the structure of the claimed apparatus (brief, page 3). Appellants contend
that “[b]ecause the apparatus is adapted for placement in-vivo of a plant or proximate thereto,
there are structural attributes provided to the apparatus that one skilled in the art would
recognize” (id.). Thus, appellants argue that because Eckhouse is silent with respect to the use
of the device disclosed therein to treat a plant, it fails to teach every element of claim 1 (id., page
4).
In similar manner, appellants submit that claim 11 requires that “at least part of said
apparatus is adapted for placement proximate to said tympanic membrane of said animal” is a
functional limitation that limits the structure of the claimed apparatus, contending that
“[b]ecause the apparatus is adapted for placement proximate to said tympanic membrane, there
are structural attributes provided to the apparatus that one skilled in the art would recognize”
(id., pages 4-5). Appellants further point out that the language of claim 11 “implies that the
tympanic membrane is subjected to electromagnetic radiation of an intensity” such “that
erythema on the tympanic membrane is minimized,” and thus, the claimed “apparatus is
attributed with structural limitations which allow the tympanic membrane to be exposed to
electromagnetic radiation of some intensity” (id., page 5). Appellants thus argue that because
Eckhouse is silent as to the use of the device disclosed therein to treat the tympanic membrane, it
fails to teach every element of claim 11 (id., page 5).
In these respects, appellants contend “that the device in [Eckhouse] is not inherently
capable of being located in proximity to a tympanic membrane,” arguing that more than a
probability or possibility of such use must be shown to establish inherency, citing In re
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