Appeal 2006-2721
Application 09/579,938
With respect to the grounds of rejection under § 102(b) over DeVito
and over Briggs, the Examiner has established that prima facie, each and
every element of the claimed apparatus encompassed by claim 3, arranged as
required by the claim, is found in each reference, either expressly or under
the principles of inherency. See, e.g., In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997), and cases cited therein. Appellant
has not supported his contentions that neither DeVito nor Briggs describes
an apparatus having the structural components as claimed by pointing to
errors in the findings made by the Examiner with respect to the disclosure of
these references. Appellant’s sole contention in this respect, that the spigots
in both references are not removably coupled to the base of the
compartments, is contrary to teachings of the references as the Examiner
points out. Appellant further has not carried the burden of establishing by
convincing argument or evidence the contentions that the compartments for
liquids and the dispensing mechanisms described in the references are
inherently incapable of “storing” to any extent and dispensing any “paint” as
we have interpreted these claim terms above. See, e.g., Schreiber, 128 F.3d
at 1478, 44 USPQ2d at 1432, and cases cited therein. Thus, on this record,
we are of the opinion that appellants have identified a new intended use for
an old apparatus known in the art for holding and dispensing liquids which
does not make that apparatus again patentable. See, e.g., Schreiber, 128
F.3d at 1477, 44 USPQ2d at 1431.7
7 We note that, as the Examiner argues, the issue of analogous art is
irrelevant in the context of whether a reference anticipates the claimed
invention. See, e.g., Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.
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