Appeal 2007-1904
Application 10/790,081
about 5 mm in diameter precisely onto the detected spot…” (col. 2, l. 52 to
col. 3, l. 52). The Appellants have not provided any objective evidence to
demonstrate that Kaya’s marking device is not capable of coating a
photosensitive layer on a substrate having a plurality of unit substrates. See
In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1432 (Fed. Cir.
1997) (while there is nothing inherently wrong with using a functional
limitation to define an apparatus, it does carry with it a risk; the burden is
placed on the applicant to prove that the prior art apparatus does not
necessarily possess the functional characteristics of the claimed apparatus,
when the claimed and prior art apparatuses appear to be identical or
substantially identical); see also In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977).
The dispositive question is, therefore, whether Kaya teaches placing a
detector “in front of” the marking device as required by claim 34.2 On this
record, we answer this question in the affirmative.
As is apparent from col. 2, l. 6, to col. 3, l. 48, of Kaya, its detector is
located “in front of” (in advance of) a marking device to detect any defects
on surfaces of a vehicle so that the marking device can subsequently be used
to mark the defective area detected by the detector. The claim language “in
front of” does not exclude the location of the detector taught by Kaya. See,
e.g., In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997) (“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art.”); In re Zletz, 893
2 The Appellants’ arguments are limited to the limitations of claim 34 (Br. 4-
17). As such, we limit our discussion to claim 34 pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii).
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