Appeal 2007-1096
Application 10/872,181
(supra at p. 4). The purpose of Nelson’s backing member is to “secure” the
magnet to the soft palate (e.g., Nelson, col. 9, ll. 5-7). This would
necessarily involve a force to hold the magnet against the uvula. The
specification does not describe any special attribute or numerical magnitude
associated with the claimed “pressing force” that would expressly
distinguish it from Nelson’s securing force. Consequently, the Examiner
reasonably presumed that securing the magnet to the uvula as required by
Nelson would involve a “predetermined pressing force to keep the apparatus
in place” (Answer 5). The Examiner concluded that Nelson’s system “does
provide a pressing force and prevents fluttering of the uvula” (id.).
When the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing patentability is possessed by
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.” In re Swinehart, 439 F.2d 210, 212-13,
169 USPQ 226, 228-29 (CCPA 1971); In re Best, 562 F.2d 1252, 1254-55,
195 USPQ 430, 433-34 (CCPA 1977). See also In re Spada, 911 F.2d 705,
709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Having shown that Nelson’s
primary magnet has the same structure as the claimed apparatus, we find that
the Examiner properly shifted the burden to Appellants to prove that it
would not perform the same function as claimed when installed in the uvula.
On this point, we find no evidence in the record rebutting the Examiner’s
reasonable presumption.
Appellants argue that the specification describes how to “optimize”
the amount of “pressing force for the invention.” (Br. 12.) However, this
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