Appeal No. 2002-0195
Application No. 09/174,977
of intended use, i.e., limitations that the composition must be
capable of operation in a certain manner. As held by a predecessor
of our reviewing court, “[t]hese terms merely set forth the
intended use for, or a property inherent in, an otherwise old
composition.” In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641,
644 (CCPA 1974). These terms do not differentiate the claimed
composition from those known to the prior art, but only define a
context in which the invention operates. See Griffin v. Bertina,
285 F.3d 1029, 1033, 62 USPQ2d 1431, 1434 (Fed. Cir. 2002).
Appellants argue that in Nakamura the water is generated in
the container by a chemical reaction of the components of the
composition, but is not adsorbed from the high moisture content of
the container as claimed (Brief, pages 5 and 8-9). Appellants’
argument is not persuasive since, as discussed above, composition
claim 31 does not require operation in a high moisture environment,
only the capability of such operation. Since each ingredient of
the Nakamura composition arguably falls within the scope of the
claimed composition, the Nakamura composition must have the
capability of operating in the same environment as claimed.
Additionally, we disagree with appellants’ interpretation of
Nakamura (Brief, pages 8-9, citing col. 3, l. 57 et seq., and col.
4, l. 1 et seq.). It is clear from these citations that Nakamura
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007