Appeal No. 2006-1880
Application No. 10/064,363
structure. It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old
product patentable. See In re Schreiber, 128 F.3d 1473, 1477-78,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997), as follows:
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 to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on. See also In re Hallman,
655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981);
In re Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563,
565-67 (CCPA 1971).
We find that the examiner therefore correctly found that
Scherzinger established a prima facie case of anticipation. At
that point, the burden shifted to Appellant to show that the
prior art structure did not inherently possess the functionally
defined limitations of his claimed apparatus. In re Schreiber,
128 F.3d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997).
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