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Ex Parte Hopkins - Page 7
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Board of Patent Appeals and Interferences > 2006 > Ex Parte Hopkins - Page 7
Appeal No. 2006-2280 Page 7
Application No. 10/244,011
claim. Answer, p. 7 (citing In re Casey, 152 USPQ 235 (CCPA 1967) and In re
Otto, 136 USPQ 458, 459 (CCPA 1963)).
The appellant argues that Shrader is non-analogous art, and that Shrader
does not anticipate because it fails to solve the problem solved by the structure of
the claims. Brief, p. 12 and Reply Brief, p. 2. The appellant further argues that the
jacket of Shrader does not anticipate the claimed support, because it is “not
adapted for mounting on a crutch or a cane” as claimed. Brief, p. 12.
It is well settled that the question of whether a reference is analogous art is
irrelevant to whether that reference anticipates. See State Contracting &
Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d
1481, 1488 (Fed. Cir. 2003) and In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997) (holding that "[a] reference may be from an entirely
different field of endeavor than that of the claimed invention or may be directed to
an entirely different problem from the one addressed by the inventor, yet the
reference will still anticipate if it explicitly or inherently discloses every limitation
recited in the claims.") Further, the recitation of a new intended use for an old
product does not make a claim to that old product patentable. Id. at 1477, 44
USPQ2d at 1432. As such, we reject the appellant’s arguments that Shrader is not
anticipatory because it is directed to non-analogous art and is directed to a different
problem than the claimed invention.
The question before us, raised by the appellant’s other argument, is whether
Shrader explicitly or inherently discloses every limitation recited in the claims.
The appellant argues that Shrader does not disclose the limitation of a support
adapted for mounting on a crutch or a cane. This limitation is found only in the
preamble of claim 1. We must determine whether this language of the preamble
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Last modified: November 3, 2007
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