Appeal 2007-1352
Application 10/406,127
i.e., as of the effective filing date of the patent application." Id. at 1313, 75
USPQ2d at 1326.
An intended use of a claimed device does not limit the scope of the
claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997) (product claim's intended use recitations not given patentable
weight); see also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961, 1965 (Fed. Cir. 2003) ("An
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates."). Although "[s]uch statements often . . . appear in the
claim's preamble," In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
ANALYSIS
Appellants contend that Examiner erred in rejecting claim 16 as being
anticipated by Duprey and in rejecting claims 1-15 as being obvious over
Duprey and Ohmura. Reviewing the documents of record and the findings
of facts cited above, we do not agree. In particular, we find that the
Appellants have not shown that the Examiner failed to make a prima facie
showing of anticipation with respect to claim 16 and a prima facie showing
of obviousness with respect to claims 1-15. Appellants failed to meet the
burden of overcoming these prima facie showings.
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