Appeal No. 2006-1145 Παγε 9
Application No. 10/143,977
From all of the above, we find that Moses anticipates claim 1, and are not
convinced of any error on the part of the examiner in rejecting claim 1 under 35 U.S.C.
§ 102(b). In sum, because claim 1 is not drawn to the combination of a door or window
frame and a telescoping support, but rather to the telescoping support for use in the
frame of a door or window, we find that the claimed invention is met by Moses. If
appellant desires to obtain patent coverage for a new use of an existing structure,
appellant’s claims should be in the form of a new use for an old device, and written as
process claims. In addition, we are cognizant of the differences between the device of
Moses and appellant’s invention, such as the single end plate 3 and single traversing
plate 5 for multiple telescoping columns, along with the vertical transversing plates or
bars 12, 13. However, these differences are not distinctly brought out in claim 1. As
broadly drafted, claim 1 is broad enough to be met by the disclosure of Moses in a
manner unintended by appellant. The rejection of claim 1 under 35 U.S.C. § 102(b) as
being anticipated by Moses is sustained, along with claims 2, 3, 5, 6, 9-11, 16, 17, 21
and 22, which fall with claim 1.
We turn next to the rejection of claim 4 under 35 U.S.C.
§ 103(a) as being unpatentable over Moses in view of Hughes. The examiner’s position
(answer, page 4) is that Moses does not disclose the first portion to be solid. To
overcome this deficiency of Moses, the examiner turns to Hughes for a teaching of
having a solid member telescopically engaged within a tubular member. Appellant
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