Appeal No. 2005-1023 Page 6
Application No. 09/963,734
with this shortfall in the rejection, the examiner dismisses the claimed arrangement of
first aid packs by stating that
A recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. If the prior art
structure is capable of performing the intended use, then it meets the claim. In a
claim drawn to a process of making, the intended use must result in a
manipulative difference as compared to the prior art. See In re Casey, 152 USPQ
235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
The claimed arrangement of first aid packs as set forth in independent claims 1,
8 and 10 is not a recitation of the intended use but a specific structural arrangement of
first aid packs. Thus, the mere fact that the prior art first aid packs are capable of being
arranged in the manner claimed is not sufficient to defeat patentability.3 The examiner
must supply evidence establishing the obviousness of the claimed arrangement of first
aid packs. Additionally, we do not agree with the position set forth by the examiner that
the cases of In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto,
312 F.2d 937, 136 USPQ 458 (CCPA 1963) support the proposition that in a claim
drawn to a process of making, the intended use must result in a manipulative difference
as compared to the prior art. Under 35 U.S.C. § 103 all words in a claim must be
3We note that the prior art applied by the examiner does not teach or suggest
either a breathing first aid pack or a bites and stings first aid pack as recited in
independent claims 1 and 10.
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