Appeal No. 2002-0957 Page 6
Application No. 09/635,634
the bottom of the walls 3 forming the partition of Pratt’s tray to be on the order of the
diameter of the finger and thumb illustrated therein, this in no way indicates that the
spacing is incapable of accommodating a portion of a thumb of that user. Further, while
this spacing may not be sufficient to accommodate the entirety of a user’s forearm, it
certainly appears capable of resting on a portion of a user’s forearm, for the same
reasons discussed above with regard to the Budd reference, notwithstanding the
presence of the skirt of the tray. Accordingly, appellant’s arguments on pages 6 and 7
of the brief do not persuade us of any error on the part of the examiner in rejecting
claim 1 as being anticipated by Pratt. It follows that we shall sustain this rejection as
well.
Turning now to the rejection based on De Murguiondo, we note that De
Murguiondo’s ice cube tray comprises a plurality of cells 3 separated by inclined walls 6
so as to define spaces between the cells. Appellant’s sole argument as to why the
subject matter of claim 1 is not anticipated by De Murguiondo is that “[o]ne skilled in the
art would not find enough space between a pair of rows of compartments on a ice tray
to accommodate a portion of a thumb and a portion of that thumb’s forearm even using
hindsight from Appellant’s invention” (brief, page 6).
In the first place, we observe that appellant’s claim 1 is directed to a container
and not to a method of supporting a container on a user’s forearm. 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
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