Appellant loses in Ex parte Nagy
As to an apparatus claim
Appellants have not shown by persuasive technical reasoning or credible
evidence that the structure set out in Fig. 1 and 2 of Braun does not perform
(or is not capable of performing) the recited functions in Appellants’ claims
as explained by the Examiner (id.). Furthermore, limitations related to the
functioning of a structural article (as claimed herein) do not directly limit the
scope of the claim; they can only serve to limit the structures performing the
functions. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) and
cases cited therein2. Appellants admit that the MEMS switch devices of
Braun are “switch devices that can be used in a self-structuring feed switch
system” (Br. 20).
Because the functional language may only serve to patentably differentiate
a claimed apparatus by means of further limiting its structure, and the
applicant is in a better position to provide evidence with regard to the
structural differences resulting from the functional limitation, our reviewing
court and its predecessors have developed a test for analyzing functional
limitations with an assignment of burdens: Where there is reason to
conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981); In re Brown, 459
F.2d 531, 535 (CCPA 1972).