Appeal No. 97-3064
Application 08/235,332
or might be used to guide a strip having a nominally curved
lateral cross section depends upon the performance or non-
performance of a future act of use, rather than upon a
structural distinction in claim 15. Stated differently, the
strip advancing and guiding device of Wittle would not undergo
a metamorphosis to a new device simply because it was used to
advance and guide a strip having such a cross section. 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).
In view of the foregoing, we will sustain the rejection
of claim 15 35 U.S.C. § 102(b) as being anticipated by Wittle.
Turning to the rejection of claim 1 under 35 U.S.C. §
102(b) as being anticipated by Wittle, this claim expressly
requires the step of “advancing the strip [i.e., the strip
having a ‘nominally curved lateral cross section’ as set forth
prove that the prior art device does not in fact possess the
characteristics relied on. See, e.g., In re Spada, supra; In
re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re Glass,
474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973) and In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971).
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