Ex parte COLLINS - Page 5

          Appeal No. 96-3919                                                          
          Application 08/224,163                                                      

               The motivation is to mark pages as shown in Figure 6 of                
               the German Patent. [answer, page 5]                                    
               At the outset, we cannot agree with the examiner that using            
          the blade portion as a bookmark is “merely intended use . . . and           
          does not structurally distinguish over the art.”  The last                  
          paragraph of each of the independent claims on appeal positively            
          recites that the blade portion of the cap extends downwardly                
          between the pages of a book, and that the writing implement (in             
          the case of claims 1 and 14) or the body portion of the cap (in             
          the case of claim 12) extends downwardly along an outside of a              
          book spine.  Thus, using the blade portion as a bookmark is not             
          merely a statement of intended use.  In any event, even if the              
          relationships between the cap and the book called for in the                
          claims were considered to be functional statements directed to              
          the intended use of the claimed device, they cannot be casually             
          dismissed as the examiner has done here.  Rather, one should                
          consider whether or not the reference structure reasonably                  
          appears to be capable of functioning in the manner called for in            
          the claims.  See, for example, In re Ludtke, 441 F.2d 660, 664,             
          169 USPQ 563, 566 (CCPA 1971).  In the present case, the examiner           
          has made no such inquiry.                                                   
               Second, and more importantly, we do not share the examiner’s           
          views regarding the relevance of Downes and Manzardo to the                 


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