Appeal No. 95-4134
Application 08/099,090
as to be received in said conventional pad holder's
horizontally-oriented slit and by the capability of the
insert's holder means to conformably lie between the pad
holder's front and back covers when the pad holder is in its
closed position (e.g., as seen in Figures 2-6). Thus, the
claimed insert is defined by its ability to cooperate with
another structure, which other structure is not positively
recited in the claim, but is defined in the preamble of the
claim and inferentially set forth in the body of the claim.
In this regard, we note that there is nothing intrinsically
wrong in defining something by what it does rather than by
what it is. See, for example, In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981).
In our opinion, the examiner's criticism of appellant's
claim 1 goes to the breadth of the claim, which we view as
broadly defining the configuration and dimensions of the
insert, its tongue and its holder means in terms of their
capability of functioning in combination with a conventional
pad holder like that set forth in the preamble of appellant's
claim 1 and as described in appellant's specification at page
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007