Appeal No. 96-3923
Application 08/309,790
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990), In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706
(CCPA 1973) and In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967). Here, the device of Fuller (i.e., nebulizer)
clearly has the capability of being used in the claimed manner
and whether Fuller's device actually is or might be used to
reduce the need of a user to smoke tobacco depends upon the
performance or nonperformance of a future act of use rather
than a structural distinction in the claims. Stated
differently, the nebulizer of Fuller would not undergo a
metamorphosis to a new device simply because it was used to
reduce the need of a user to smoke tobacco. See In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974)
and Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int.
1987).
In view of the foregoing, we will sustain the rejections
under 35 U.S.C. § 103 of claims 8 and 12-14 as being
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