Appeal No. 97-0331
Application 08/359,562
performance or non-performance of a future act of use, rather
than upon a structural distinction in the claims. Stated
differently, the paddle of Malm would not undergo a metamorphosis
to a new paddle simply because it was used in the manner which we
have noted above. See In re Pearson, 494 F.2d 1399, 1403, 181
USPQ 641, 644 (CCPA 1974) and Ex parte Masham, 2 USPQ2d 1647,
1648 (Bd. Pat. App. & Int. 1987).
We observe that on page 7 of the brief the appellant argues
that the opening 5 of Malm is sized only to accommodate a portion
of the hand of a user. We must point out, however, not only does
Malm in Fig. 1 depict the hand of the user being accommodated in
the opening 5, but it is expressly stated in Malm that “the
opening [5] is to receive the hand of the user.” Moreover, even
if the opening 5 of Malm only accommodated a portion of the hand
of the man depicted in Fig. 1, the hand of a smaller person, such
as a woman or child, would obviously be accommodated by this
opening.
In summary:
The examiner’s rejections of claims 1-14 are all reversed.
A new rejection of claims 1, 8 and 9 under 35 U.S.C.
§ 102(b) has been made.
This decision contains a new ground of rejection pursuant to
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