Appeal 2007-2040
Application 10/632,741
liquids in view of the vast breadth of the claimed recitation, which embraces
materials exhibiting even low levels of the anti-static property.
We now turn to the separate § 102 rejections of all the appealed
claims over Hodgens and Bartos. The sole substantive argument advanced
by appellants with respect to the separate rejections is that neither of the
applied references discloses the use of an anti-static liquid. However, it is
fundamental that an apparatus claim defines the structure of the invention
and not how the structure is used in a process, or what materials the structure
houses in carrying out the process. Ex parte Masham, 2 USPQ2d 1647,
1648 (BPAI 1987). See also In re Yanush, 477 F.2d 958, 959, 177 USPQ
705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 1032, 168
USPQ 530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ
235, 238 (CCPA 1967). As long as the apparatus of Hodgens and Bartos are
capable of injecting an anti-static liquid into a gas turbine engine, the prior
art apparatuses meet the requirements of the claimed feature. Appellants
have not established on this record any structural distinction between
apparatus within the scope of the appealed claims and the apparatuses fairly
described by both Hodgens and Bartos, and no such structural distinction is
apparent to us.
Appellants maintain that "Hodgens does not describe nor suggest a gas
turbine engine washing system including each and every structural
limitation claimed by the Applicants … [since] [s]pecifically, Hodgens does
not describe nor suggest a gas turbine engine washing system that includes
an anti-static liquid" (page 13 of Reply Br., second para.). However,
Appellants' claim recitation of one of the first and second fluids comprising
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Last modified: September 9, 2013