Appeal 2007-0487
Application 09/759,993
presume that the prior art structure would also possess a claimed function
employing an inherency theory. See In re Schreiber, 128 F.3d at 1478,
44 USPQ2d at 1432.
In a case such as this where Appellants present claims with a
functional feature for establishing novelty in the claimed subject matter that
reasonably may, in fact, be an inherent characteristic of applied prior art
devices, it is incumbent and appropriate that Appellants bear the burden to
prove that the applied prior art devices do not in fact possess the functional
characteristics that Appellants rely on for establishing novelty. See In re
Spada, 911 F.2d 705, 708, 15 USPQ 1655, 1658 (Fed. Cir. 1990); In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best,
562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA 1977); In re Glass,
474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973); In re Ludtke, 441
F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971); In re Swinehart, 439 F.2d
210, 212-13, 169 USPQ 226 228-29 (CCPA 1971). After all, Appellants
have taken the risk of attempting to establish novelty of the claimed device
based on a recited functionality for their apparatus, a functionality that their
apparatus is alleged and claimed to possess, and which functionality the
applied prior art is argued to lack.
In this regard, the Patent and Trademark Office is not in a position to
build and comparatively test products for an asserted functionality,
especially where, as here, the functionality, in question, is seemingly tied to
a particular manner of use of the recited structural elements (recited rolls and
the arrangement thereof on a frame) rather than clearly indicating a further
restriction to the type of recited elements and/or arrangement of the recited
structural elements (rolls on a frame).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013