Appeal No. 2006-1300
Application No. 08/203,672
The appellants have not cogently explained, however,
and it is not apparent, why Graham’s filling tube 29 does
not structurally embody a bag access that (1) constitutes a
portion of the enclosure and (2) is adapted to
substantially seal the bag in a first position and
selectively allow the introduction of breast milk in a
second position as recited in claim 20. The language in
the claim pertaining to breast milk merely sets forth an
intended use of the disposable bag and does not recite the
breast milk in combination with the bag. Although Graham
does not describe breast milk as one of the viable and
perishable materials that can be introduced into and stored
within pouch 11, the pouch clearly is inherently capable of
being used for this purpose. In this regard, it is well
settled that the manner or method in which a device is to
be utilized is not germane to the issue of patentability of
the device itself (In re Casey, 370 F.2d 576, 580, 152 USPQ
235, 238 (CCPA 1967)) and that the recitation of a new
intended use for an old product does not make a claim to
the old product patentable (In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)).
Thus, the appellants’ position that the subject matter
recited in claim 20 distinguishes over that disclosed by
8
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