Appeal 2006-1593
Application 09/737,413
In this regard, Appellants refer to a portion of pages 2 and 3 of their
Specification in arguing that a transfix element “has different electrical,
mechanical, and chemical requirements for the layers thereof” than those of
a fuser (Br. 7-8, Reply Brs. 3). However, our review of the referred to pages
of the Specification reveals no implicitly required product distinction for the
claimed transfix member over the applied fuser of Badesha based on the
general discussion about electrostatic printing machine transfer and transfix
members set forth therein. Concerning the outer layer requirements of
representative claim 20, we note that Badesha ‘643 discloses that the fuser
members referred to therein employ an outer layer with good thermal
properties that appears to be substantially identical to the outer layer
required by the representative claim. Compare the mica-type layered silicate
described for use in the silicone elastomer-containing outer layer of the fuser
of Badesha ‘643 with the requirements of representative claim 20. See, e.g.,
col. 6, l. 43 through col. 2, l. 52 of Badesha ‘643.
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997):
A patent applicant is free to recite features of an
apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971)(“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213, 169
USPQ at 228:
where 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
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