Appeal No. 2006-1576 7
Application No. 10/223,170
(61) and the tubular casing (69) when the first material is
compressed into contact with the tubular casing.
As was made clear in In re Schreiber, at 129 F.3d at 1473,
44 USPQ2d at 1429, by choosing to define an element functionally as
in claim 1 on appeal, appellant assumes a risk, that risk being
that where the Patent and Trademark 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 upon. In the present case, appellant has provided no
evidence to prove that the outer softer elastomeric material (60)
of Urbanosky pointed to by the examiner lacks, or is incapable of
achieving the functionally defined limitations set forth in claim
1 on appeal.
For the above reasons, we will sustain the examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated
by the sealing apparatus of Urbanosky.
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