Appeal 2007-3148
Application 10/638,885
From the above disclosures, the Examiner properly found that Meyers
discloses all of Appellants’ structural features of claims 1, 2, and 8 (Answer
3-5). While Appellants use functional language in the claims (e.g., “said
body isolating the floor drain line from the encircling and poured concrete
adhering against exteriorly facing services associated with said body”
(independent claims 1 and 8)), Meyers’ system inherently possesses the
capability of performing this function and therefore the appealed apparatus
claims do not structurally or functionally define over the prior art. In re
Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir.
1997) (explaining that, while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure where the recited
function is inherently possessed by the prior art).
Accordingly, we affirm the Examiner’s § 102(b) rejection of argued
claims 1, 2, and 8 and dependent claims 3-5.
DEPENDENT CLAIM 6 AND INDEPENDENT CLAIM 9
Appellants argue that claims 6 and 9 recite a volume of sand
aggregate that can be adapted to be filled into said open interior which is
contrary to the teachings of Meyers because Meyers’ disclosed invention is
constructed to operate as a continuous drainage trench (Br. 5).
We have considered Appellants’ argument and find it unpersuasive
for the reasons below.
The absence of a disclosure in the prior art relating to an inherently
possessed function does not alone defeat a finding of anticipation.
Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431.
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