Appeal 2006-2686
Application 09/994,495
Accordingly, we must first properly construe the disputed term “seal.”
Here we need not rely on extrinsic evidence (i.e., the technical reference
system referred to by Appellants), since Appellants’ Specification implicitly
defines a “sealed device” as one that “protects the sample sealed therein
from evaporation, contamination, and leaking” (Specification 5:21-24).
However, we note that claim 1 on appeal does not positively recite that the
sealing device “seals” the first end openings but merely requires that the
sealing device has a surface “adapted to individually seal” each of the first
end openings. As stated by our reviewing court,3 a patent applicant is free to
recite features of an apparatus either structurally or functionally. Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk. If the prior art reference describes the same apparatus, the
functional recitation will not serve to distinguish the claim from this prior
art. See Schreiber, supra. Therefore we agree with the Examiner that
Franciskovich describes the same “sealing device” (collection plate 16 with
recesses (34)) as disclosed and claimed by Appellants, and this collection
device is capable of individually sealing each of the first end openings.
Whether the upper surface (36) of tray (16) is “firmly held” against the
lower surface (23) of the tube holder (14) of Franciskovich with sufficient
force to “seal” each opening (Br. 12; Answer 9-10) is not material to the
finding that the sealing device of the reference is capable of sealing the
individual openings.4
3 In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
4 Even assuming arguendo that the claim positively required sealing, we
agree with the Examiner that the collection plate of the reference “seals” the
6
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