Appeal No. 97-0972
Application 08/399,571
cannot be considered to anticipate the instant claims inasmuch as
there is no teaching therein that portions of the hold-down
member engage an armrest assembly and seat in the claimed manner.
This contention is unpersuasive. It is well settled that if a
prior art device inherently possesses the capability of
functioning in the manner claimed, anticipation exists regardless
of whether there was a recognition that it could be used to
perform the claimed function. See, e.g., In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See
also LaBounty Mfg. v. Int’l Trade Comm’n, 958 F.2d 1066, 1075, 22
USPQ2d 1025, 1032 (Fed. Cir. 1992) (in quoting with approval from
Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823, 828 (2d
Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed without
change for the purposes of the patent; the statute
authorizes the patenting of machines, not of their
uses. So far as we can see, the disclosed apparatus
could be used for "sintering" without any change
whatever, except to reverse the fans, a matter of
operation.
Here, in view of (1) the size of the hold-down member 10 or 110
of Gardels relative to the trunk of an automobile and (2) the
fact that Gardels’ hold-down member is stated to be “strong” and
made of “metal,” there is a reasonable basis to conclude that
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