Appeal No. 97-3193
Application 08/467,326
Appellants assert that the cap element 37 of the Erb Patent is not for a
valve, much less does it constitute a valve spray disk [as claimed] . . . .
[Brief, page 5; bold in original.]
This argument is not persuasive. First of all, the preamble recitation in each of the
independent claims on appeal that the claimed spray disk is “for a valve” having certain
characteristics amounts to a statement of intended use which cannot be relied upon to
distinguish the claimed structure over a prior art structure which otherwise satisfies all the
structural limitations of the claims. See, for example, In re Yanush, 477 F.2d 958, 959,
177 USPQ 705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 1032, 168 USPQ
530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967); and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). Accord for
this proposition is found in In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997), wherein the Court noted that “[i]t is well settled that the recitation of an
new intended use for an old product does not make a claim to that old product patentable.”
Secondly, in that the shims 48 provided on Erb’s piston element 38 may be formed of
compressible material such that the pressure of gas flow acting against the underside of
the piston element may in increased to the point that liquid flow stops (column 9, lines 52-
60), Erb’s element 37 is “for a valve,” as broadly claimed. Further, in that appellants’
broad claim language is in an open-ended “comprising” format that does not exclude the
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