Appeal No. 96-3741
Application No. 08/177,288
other apparatus elements. In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971). The examiner has proffered no
cogent rationale in support of a contrary view. It follows
that we will not sustain her section 112, second paragraph,
rejection of the claims before us.
As for the section 102 rejection of claim 6, we agree
with the examiner that the cosolvent mixture recitation of
this claim fails to distinguish over the apparatus disclosed
in the German reference. According to the appellants, this
claim 6 recitation “is a restriction on the claimed coater
apparatus and structurally limits the apparatus claim” (brief,
page 8). This is incorrect as a matter of law. See, for
example, In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238
(CCPA 1967) (manner or method in which a machine is to be
utilized is not germane to patentability of the machine
itself). We shall, therefore, sustain the rejection of claim
6 under 35 U.S.C. § 102(b) as being anticipated by German
‘402.
We will also sustain the section 103 rejection of claims
3, 12 and 14 as being unpatentable over German ‘402. The
appellants argue that “[c]laims 3 and 14 both require ‘means
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007