Appeal No. 96-1827
Application 08/112,576
appellant explained, why the chess pieces disclosed by Samuels are not inherently capable of being so
used. That Samuels does not expressly teach such use is of no moment. The recitation of a new
intended use of an old product does not make a claim to that old product patentable. In re Schreiber,
128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also LaBounty Mfg. Inc. v.
United States Int’l Trade Comm’n, 958 F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed.
Cir. 1992) (“[t]he use for which the [anticipatory] apparatus was intended is irrelevant, if it could be
employed without change for the purposes of the patent”); In re Swinehart, 439 F.2d 210, 213 , 169
USPQ 226, 229 (CCPA 1971) (“the mere recitation of a newly discovered function or property,
inherently possessed by things in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art”); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967)
(“[t]he manner or method in which such machine is to be utilized is not germane to the issue of
patentability of the machine itself”).
Thus, the appellant’s position that the subject matter recited in claims 1, 4 through 6 and 10
distinguishes over Samuels is not persuasive. Therefore, we shall sustain the standing 35 U.S.C. §
102(b) rejection of these claims.
Since the appellant has grouped claims 9 and 13 through 16 with various ones of claims 1, 4, 5
and 10 for purposes of this appeal pursuant to 37 CFR § 1.192(c)(7) (see pages 6 and 7 in the brief),
we also shall sustain the standing 35 U.S.C. § 102(b) rejection of claims 9 and 13 through 16 as being
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