Appeal 2006-2438
Application 09/259,306
Regarding the stated rejection, we note the Examiner relies on In re
Application of Walter M. Fuller, 35 F.2d 479; 3 USPQ 51, 1929 C.D. 172
(CCPA 1929) (see Supplemental Answer 7) for the proposition that a
functional limitation must properly invoke the sixth paragraph of 35 U.S.C.
§ 112 to be accorded weight. However, the Examiner’s reliance on the pre-
1952 decision in Fuller, as a reading thereof makes plain, is clearly
misplaced. In this regard, it is well settled that an apparatus feature may be
described functionally; that is, by what it does. Nor are we aware of any
requirement that such a functional limitation can only be presented as part of
a limitation that invokes the sixth paragraph of 35 U.S.C. § 112 by avoiding
any structure in reciting that limitation.
It is also well-settled that an Examiner may shift the burden to
Appellants by showing how a prior art structure substantially corresponds to
a claimed structure such that it would be reasonable to presume that the prior
art structure would also possess a claimed function employing an inherency
theory. See In re Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432.
However, in the present case for reasons set forth above, the Examiner has
not established with sufficient specificity how the applied prior art
substantially corresponds to each claim feature to support an inference that
the prior art would also be attended by all of the claimed functional features.
REQUEST FOR ORAL HEARING
Appellants’ Request for a second oral hearing pursuant to 37 C.F.R. § 41.47
filed on September 22, 2005 is Denied. Appellants are generally limited to a
single oral hearing pursuant to 37 C.F.R. § 41.47(a). Moreover, 37 C.F.R.
§ 41.47(f) provides that “Notwithstanding the submission of a request for
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