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 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
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