Appeal No. 2002-0910 Page 5
Application No. 09/229,855
or accelerate wound healing (brief, pages 5 and 6). This argument is directed to the
intended use of the device. It is well settled that the recitation of an intended use for 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). The examiner was justified
in concluding that Fox’s bandage is inherently capable of use for healing a wound in the
manner set forth in claim 12. At that point, the burden shifted to appellants to show that
the Fox bandage did not inherently possess the functionally claimed limitations of the
claimed apparatus (i.e, the capability of the Fox bandage to be used in the manner set
forth in claim 12). Id, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432. This appellants
have not done. Appellants have not even alleged, much less shown, that Fox’s
bandage is incapable of the use called for in claim 12.
For the foregoing reasons, we shall sustain the examiner’s rejection of claim 12,
as well as claim 1 which falls therewith, as being anticipated1 by Fox.
Claim 8, on the other hand, is directed to a method for healing a wound and
requires, inter alia, steps of positioning an ultrasonic transducer having an operative
surface substantially adjacent to the wound, fastening the transducer to an exterior
portion of a patient’s body to secure the operative surface substantially adjacent the
wound and emitting ultrasound from the operative surface toward the wound and away
1 Anticipation does not require that the reference teach what the subject application teaches, but
only that the claim read on something disclosed in the reference, i.e., that all of the limitations in the claim
be found in or fully met by the reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
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