Appeal 2007-2358
Reexamination Control No. 90/006,888
and why. Moreover, this argument directly contradicts, without explanation,
the description provided by Oestreich (Oestreich at 1:10–11) as well as
Dura Line's own characterization of Oestreich (IDS at 1; Brief at 5) as
providing a "protective casing for optical fibers and cables."
Dura Line argues further that in the tube taught by Oestreich, the
individual fibers are placed in the tube during manufacture of the cable,
rather than being inserted into the tubes longitudinally. (Br. at 7–8.) Dura
Line does not cite any evidence in support of this argument. This argument
is not persuasive because an article of manufacture, i.e., a structure, is
claimed, not a method of making or using the article. The Examiner argued
(Answer at 8), and the preponderance of the evidence of record reasonably
shows, that the structure described by Oestreich is capable of performing the
required functions. The burden was therefore shifted to Dura Line to
establish that the Oestreich structure did not inherently possess the
functionally defined limitations of the claimed tube. Cf. Schreiber, 128 F.3d
at 1478, 44 USPQ2d at 1432. Dura Line failed to carry its burden.
Dura Line further seeks to distinguish Oestreich from its claimed
subject matter by pointing to three "major restrictions" that it finds in
Oestreich but not in Dura Line's claimed invention. (Br. at 9–10.) These
restrictions6, however, are immaterial because they do not relate to
limitations recited in Dura Line's claims. The transitional language
"consisting essentially of" used in Dura Line's claims excludes additional
materials or structures that would materially affect the basic and novel
6 According to Dura Line, Oestreich limits the relative size of the inner
diameter of the tube and the cable (or fiber); the materials of the inner and
outer layers; and the identity of the enclosed fiber or cable.
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