Appeal 2007-3146
Application 10/002,952
shown in Figure 10 as demonstrating that the bending moments of the
transparent substrate and the protective film “are balanced” within the
meaning of Appellants’ claim 12.
We further note that Appellants use functional language in claim 12
(i.e., the claim language directed to the balancing of the various properties of
the film). Where the Patent and Trademark 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 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 Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432
(Fed. Cir. 1997).
Accordingly, based on our claim construction and Appellants’ use of
functional language, the burden shifted to Appellants to establish a
difference between their optical data recording medium and the optical
information recording medium of Tajima. Id. Appellants have not
established any difference.
Accordingly, we affirm the Examiner’s § 102(b) rejection of argued
claims 1, 10, and 11-13 and non-argued claims 5 and 6 over Tajima.
CLAIM 14
Appellants argue that the transitional claim language, “consisting
essentially of,” excludes a non-identified additional layer disclosed by
Tajima such that Tajima cannot be said to anticipate Appellants’ claimed
invention (Br. 17).
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