Ex parte TAFT - Page 5




          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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