Appeal No. 2006-1900
Application No. 10/163,946
rather than any structural element recited. Additionally, appellant’s urging at page 6 of
the principal brief on appeal that the resulting use of a camera in like manner would end
up with blurred images is misplaced. In fact, Mikoshiba teaches the exact feature
appellant urge is not taught, namely the ability of Mikoshiba’s camera to pick-up a
plurality of still images in real time, thus having the ability to provide output images on
the electronic viewfinder 273 in Figure 1 as moving images. Note column 14, lines 26
through 30. In like manner, we find misplaced, the argument at the bottom of page 2 of
the reply brief that Mikoshiba discloses a still camera “and not a scanner in which
sequential scan line images are acquired via relative movement between the imaging
device and the object.” Clearly, there is no line scanner recited in independent claim 1 on
appeal as also argued at page 2 of the reply brief.
A different intended use of the same structure as in the prior art does not prohibit
a statutory anticipation rejection, for example. Indeed, it has been stated by our
reviewing court that "the absence of a disclosure relating to function does not defeat the
Board’s finding of anticipation. It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable” (case citations
omitted). In re Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
The court concludes at 128 F.3d 1477, 44 USPQ2d 1431-32, that "Schrieber’s contention
that his structure will be used to dispense popcorn does not have patentable weight if the
structure is already known, regardless of whether it has ever been used in any way in
connection with popcorn” (emphasis added). Such reasoning obviously applies to
rejections under 35 U.S.C. § 103. Schrieber confirms the guidance provided in Ex
parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Int. 1987), that a recitation with respect
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