Appeal No. 2002-0771 Page 3
Application No. 09/294,288
OPINION
According to Appellants, claims 1-9 and 12-18 are to stand or fall together while claims
10 and 19 are to be considered separately (Brief at 4). Therefore, our main focus will be on
claims 1 and 10 which we select to decide the appeal in accordance with 37 CFR
§ 1.192(c)(7)(2002).
Claim 1 is directed to an apparatus. "[A]pparatus claims cover what a device is, not what
a device does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468, 15 USPQ2d
1525, 1528 (Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina Marketing Int’l Inc. v.
Coolsavings.com Inc., 289 F.3d 801, 809, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002), or the
function or result of that structure. In re Danly, 263 F.2d 844, 848, 120 USPQ 528, 531 (CCPA
1959); In re Gardiner, 171 F.2d 313, 315-16, 80 USPQ 99, 101 (CCPA 1948). If the prior art
structure possesses all the claimed characteristics including the capability of performing the
claimed function, then there is a prima facie case of unpatentability. In re Ludtke, 441 F.2d 660,
663-64, 169 USPQ 563, 566-67 (CCPA 1971).
The Examiner makes the point that the device of Torregrossa is identical to Appellants’
claimed device (Answer at 3). We agree. The apparatus of Torregrossa contains the membrane
(gas porous wall 16), the first passageway (gas filled chamber 18), and the second passageway
(vortex chamber 12) required by claim 1. In fact, the structures are configured in the same way,
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