Appeal No. 96-1918
Application 08/196,931
page 2). Appellant argues that the use of Clark's device in
this manner is physically impossible and "[a] physically
impossible use of a patented device, whether used alone or
in combination with another patented device (such as
Nishawaki [sic]), cannot properly be considered to be an
'obvious' use of a patented device" (Br5). We do not agree
with the examiner's reasoning, but this does not affect our
decision because the reasoning was unnecessary. Claim 1
does not require being able to manipulate the conveyor belt
or being able to operate switches. The tower 62 of Clark
and the grip case 35 of Nishiwaki are capable of being used
as handles with the fingers wrapped around them as claimed,
which is all that is required by claim 1.
Appellant argues (RBr2):
It is quite clear that Clark does not disclose, teach,
or suggest the use of tower 62 as a "handle", as
Appellant is claiming in claim 1. In fact, Clark
actually teaches away from such an interpretation, as
quoted above, since the user could only operate the
Clark device if his hand were parallel to base 12, and
could not therefore curl his fingers around tower 62.
If tower 62 were used as a "handle", as Appellant is
claiming in claim 1, the intended function of the Clark
device would be destroyed, as the user would be unable
to move the cursor in the third degree of freedom, and
would be unable to operate switch 52. Since the
intended function of the Clark device would be
destroyed with such a use, there is no technical
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