Appeal No. 97-0972
Application 08/399,571
Gardels’s hold-down member is inherently capable of holding down
a theater seat in the claimed manner. Whether Gardels’ hold-down
member actually is or might be used to hold down a theater seat
depends upon the performance or non-performance of a future act
of use, rather than upon a structural distinction in the claims.
Stated differently, the hold-down device of Gardels would not
undergo a metamorphosis to a new device simply because it was
used to hold down a theater seat in the claimed manner. 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).
It is also the appellants’ contention that Gardels is non-
analogous art since Gardels’ device holds down the trunk of a
car, rather than a theater seat. We must point out, however,
that “the question whether a reference is analogous art is
irrelevant to whether that reference anticipates,” Schreiber, 143
F.3d at 1477, 44 USPQ2d at 1432.
As to claims 3 and 7 the appellants additionally argue that
the portions 18 and 24 (which the examiner considers to be the
wings) do not extend from opposing “sides” of the elongated
member. We observe, however, that the terminology in a pending
application's claims is to be given its broadest reasonable
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007