Appeal No. 2005-1117
Application 10/078,043
at least iris 20 of the handheld flashlamp of Eckhouse proximate the tympanic membrane of an
animal affected by acute otitis media, because the exposure area can be adjusted by iris 20 for
the size of the external acoustic meatus or auditory canal and the tympanic membrane when this
part of the flashlamp is located at the auricle or external ear of an animal, and the
electromagnetic radiation and intensity can be adjusted within the ranges taught by the reference.
Indeed, there is no limitation on the size of the subject ear or any features thereof as it can be of
any animal, ear dimensions of the auricle or external ear and the external acoustic meatus or
auditory canal varying even within the same species. Thus, we agree with the examiner that the
flashlamp apparatus disclosed by Eckhouse inherently satisfies each and every element of the
claimed apparatus encompassed by claim 11, arranged as required by that claim. Therefore, the
burden rests with appellants to establish that the handheld flashlamp of Eckhouse is inherently
incapable of performing the function of treating acute otitis media in any animal as specified in
the claim. See Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432..
As the examiner points out, appellants have not carried the burden of establishing that the
at least a part of the handheld flashlamp of Eckhouse is incapable of placement proximate to the
in-vivo location of the pathogen in any plant or part thereof, or that at least a part of the
flashlamp is incapable of placement proximate to the tympanic membrane of any animal, and
thus incapable of performing the function specified in the claims. We find no evidence
supporting appellants’ contentions elsewhere in the record. See generally, In re Glass, 474 F.2d
1015, 1019, 176 USPQ 529, 532 (CCPA 1973); Ludtke, 441 F.2d at 663-64, 169 USPQ at
565-67. Furthermore, we are not convinced by appellants’ argument that Eckhouse does not
serve as an anticipation because the reference is silent with respect to the use of the handheld
flashlamp to treat pathogens in-vivo in plants and plant parts, and acute otitis media in animals.
Indeed, on this record, appellants have merely identified a new intended function of treating
living pathogens in-vivo in organisms for the handheld flashlamps of Eckhouse disclosed to
perform the function of treating a living organism with broad-spectrum electromagnetic radiation
for other purposes, which does not make Eckhouse’s handheld flashlamps again patentable. See
generally, Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431.
Accordingly, we have again considered the totality of the record before us, weighing all
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