Appeal No. 96-2270
Application 08/073,108
because the device Keller is employed to clean bottles (which are
to be used for containing food products - see page 1, column
1, second paragraph) that it would have been obvious to utilize
Keller’s device to clean a suction canister having both a suction
port and a patient port as the examiner apparently believes.
Moreover, it is not even readily apparent that the device of
Keller has the inherent capability of cleaning such a canister.
In this regard, it should be noted that while it is well settled
that a claimed functional limitation directed to a new intended
use of an old apparatus does not in and of itself make a claim
drawn to an apparatus patentable over the old apparatus, it is
nevertheless necessary that the old apparatus (e.g., the
apparatus of Keller) be inherently capable of performing the
recited intended use in order to satisfy the functional
limitation in question. See, e.g., In re Schreiber, F.3d ,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
With respect to method claims 35 and 37-39, we additionally
observe that 35 U.S.C. § 100(b) specifically recognizes a new use
of a known machine as proper subject matter for a patent. See
also Ex parte Markowitz, 143 USPQ 303, 305 (Bd. App. 1964).
As to claims 15-17 and claim 36 we have carefully reviewed
the teachings of Mertens and Baxter but find nothing therein
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