Appeal No. 2006-2036 Page 5
Application No. 10/382,753
The Examiner argued in the alternative that even if the fluid collecting tray
11 is interpreted as the fluid retaining means, the phrase, “structured and arranged
to be placed substantially flat on the ground in position below the aircraft” is a
functional recitation, and such a recitation of intended use is not given patentable
weight. The examiner has determined that the structure 11 of Telder is capable of
performing such intended use and thus anticipates the claims. (Examiner’s
Answer, pp. 6-7). The examiner made the same arguments for claims 8 and 15
(Examiner’s Answer, pp. 8-10).
We disagree with the examiner’s interpretation of this limitation of the
claims as being merely a functional limitation. The disputed language does not
refer merely to a function of the recited system or to a desired result but rather it
defines a physical property. See e.g., In re Swinehart, 439 F.2d 210, 169 USPQ
226 (CCPA 1971). See also In re Benson, 418 F.2d 1251, 1254, 164 USPQ 22, 25
(CCPA 1969) (“Sometimes, as here, a material is as well defined by its intended
use as by its dimensions or other physical characteristics, and in this case we know
of no reason why the limitation in terms of use should not be placed in the claims
and given meaning in their interpretation.”) Specifically, the claim language
requires that the fluid retaining means (claim 1), fluid retainer (claim 8), and drip
pan (claim 15) be structured to rest flat on the ground. This requires, as argued by
the appellant, that the retainer have “a continuous horizontal surface spread out
upon the ground so as to be level or even.” (Appellant’s Reply Brief, p. 2).
Because the bottom wall 30 of the collection tray 11 of Telder slopes downwardly,
it cannot be placed flat on the ground. As such, we do not sustain the examiner’s
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