Appeal No. 2006-2826 Page 6
Application No. 09/993,907
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.
The Examiner’s reason for asserting that DiCosmo’s hydrogel covered device
would render the device visible under MRI is that the hydrogel is cross-linked and thus
has the same structure required by the claims. Thus, a “basis in fact and/or technical
reasoning” was provided by the Examiner to support the rejection, contrary to
Appellants’ argument. Brief, page 7; Reply brief, page 3.
There is also no requirement in patent law that the cross-linking would have been
recognized by the skilled artisan as having conferred visibility to the medical device as
long as this property was nonetheless inherent to it. “Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary
skill may not recognize the inherent characteristics or functioning of the prior art.”
MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d
1303, 1305-6 (Fed. Cir. 1999).
Having shown that the claimed medical device has the same structure as
DiCosmo’s device, we find that the Examiner properly shifted the burden to Appellants
to prove otherwise. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658; In re
King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986); In re Best, 562
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