Appeal No. 96-1918
Application 08/196,931
least three fingers of a human hand curled about it when the
wrist of said human hand is positioned perpendicularly to
said base unit" defines an intended use for (i.e., a
handle), or a structure inherent in, the devices of
Nishiwaki and Clark. Statements of intended use do not
serve to distinguish structure over the prior art.
In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA
1974); In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706
(CCPA 1973); In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967). Thus, because the devices of Nishiwaki and
Clark are capable of being used as broadly claimed, claim 1
does not define over these references. There is no need to
modify the structure of Nishiwaki or Clark to meet the
limitations of claim 1. Cf. In re Mills, 916 F.2d 680, 682,
16 USPQ2d 1430, 1432 (Fed. Cir. 1990) ("While Mathis'
apparatus may be capable of being modified to run the way
Mills' apparatus is claimed, there must be a suggestion or
motivation in the reference to do so."). A "new use of a
known process, machine, manufacture, composition of matter,
or material" must be claimed as a process. 35 U.S.C.
§ 100(b).
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