Appeal 2006-3208
Application 10/097,232
solutions . . . , without destroying the biological activity of
proteins, blood or blood constituents . . . .
Goodrich, Jr. et al. nowhere discuss[] lubricants,
lubrication or beverage conveyors. A person having ordinary
skill in the art of beverage conveyor lubrication would have
no reason ever to consult Goodrich, Jr. et al., which involves
blood treatment, a field entirely unrelated to beverage
conveyor lubrication.
(Br.4 13-14; see also Reply5 4-5.)
The Appellants further contend the Examiner “has improperly refused
to consider all words in the claim when judging patentability” by not giving
weight to the claim limitation “permitting high speed movement of blow
molded polyethylene terephthalate containers along a beverage conveyor.”
(Reply 8.)
We agree with Appellants that the Examiner’s findings relating the
Goodrich reference, and his failure to consider functional claim language
require us to reverse the Examiner’s § 103 ground of rejection. While
functional claim language can be satisfied inherently if a prior art
composition is capable of performing the function, the language cannot be
ignored. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
(agreeing with the Board that the functional claim limitation was inherently
met by the prior art).
However, given the record before us, we conclude the teachings of the
cited references are sufficient to support a § 103(a) rejection, in view of the
level of skill and knowledge in the art, as disclosed in Appellants’ and Li’s
4 Citations to “Br.” are to the Appeal Brief (received July 6, 2005).
5 Citations to “Reply” are to the Supplemental Reply Brief (filed July 17,
2006).
4
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