Appeal No. 96-3919
Application 08/224,163
The motivation is to mark pages as shown in Figure 6 of
the German Patent. [answer, page 5]
At the outset, we cannot agree with the examiner that using
the blade portion as a bookmark is “merely intended use . . . and
does not structurally distinguish over the art.” The last
paragraph of each of the independent claims on appeal positively
recites that the blade portion of the cap extends downwardly
between the pages of a book, and that the writing implement (in
the case of claims 1 and 14) or the body portion of the cap (in
the case of claim 12) extends downwardly along an outside of a
book spine. Thus, using the blade portion as a bookmark is not
merely a statement of intended use. In any event, even if the
relationships between the cap and the book called for in the
claims were considered to be functional statements directed to
the intended use of the claimed device, they cannot be casually
dismissed as the examiner has done here. Rather, one should
consider whether or not the reference structure reasonably
appears to be capable of functioning in the manner called for in
the claims. See, for example, In re Ludtke, 441 F.2d 660, 664,
169 USPQ 563, 566 (CCPA 1971). In the present case, the examiner
has made no such inquiry.
Second, and more importantly, we do not share the examiner’s
views regarding the relevance of Downes and Manzardo to the
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