Appeal 2007-1909
Application 10/608,290
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in
fact, be an inherent characteristic of the prior art, it
possess 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.
Where, however, the functional limitation in a claim expressly or impliedly
requires a particular structure different from that in the prior art, the claimed
subject matter is distinguishable from the prior art. Compare In re Casey, 370 F.2d
576, 580-81, 152 USPQ 235, 239 (CCPA 1967) (holding that a claim to “[a] taping
machine comprising … a brush … being formed with projecting bristles which
terminate in free ends to collectively define a surface to which adhesive tape will
detachably adhere” is obvious over a prior art reference which taught a machine for
perforating sheets, because “the references in [the claim] to adhesive tape handling
do not expressly or impliedly require any particular structure in addition to that of
[the prior art].”)
ANALYSIS
Independent claims 1 and 21 recite an apparatus comprising “an arm having
… a second opposed end adapted for insertion in an aperture in the first edge
flange of the repair clamp.” This recitation is a structural limitation of the claims
that requires one end of the tool’s arm to be structurally configured so as to allow
the end to fit in an aperture in a repair clamp edge. Both Bosco and Murray
disclose clamps particularly designed for use with a concrete mold (Findings of
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