Appeal No. 2001-2205
Application 09/228,987
While we recognize that the structure found in Johnson is
not used in the manner set forth in appellant's claim 1, we share
the examiner’s view that the apparatus in Johnson is structurally
the same as and fully responsive to that set forth in claim 1 on
appeal and is clearly capable of being used in the manner defined
therein. In this regard, the examiner has expressed the view
that appellant is attempting to hinge patentability of the device
on mere intended use and has pointed out that our Courts of
review have repeatedly indicated that a recitation with respect
to the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a
prior art apparatus satisfying the structural limitations of that
claimed. See, for example, In re Yanush, 474 F.2d 958, 959, 177
USPQ 705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028,
1032, 169 USPQ 530, 534 (CCPA 1971); In re Casey, 370 F.2d 576,
580, 152 USPQ 235, 238 (CCPA 1967); and In re Otto, 312 F.2d 937,
939, 136 USPQ 458, 459 (CCPA 1963). Accord for this proposition
is found in In re Schreiber, 128 F.3d at 1477 44 USPQ2d at 1431,
wherein the Court noted that "it is well settled that the
recitation of a new intended use for an old product does not make
a claim to that old product patentable."
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