Appeal No. 98-2109
Application No. 08/500,315
structural difference between the claimed
invention and the prior art in order to
patentably distinguish the claimed invention
from the prior art. If the prior art structure
is capable of performing the intended use, then
it meets the claim. In re Casey, [370 F.2d 576,
580,] 152 USPQ 235[, 238] (CCPA 1967); In re
Otto, [312 F.2d 937, 940,] 136 USPQ 458, 459
(CCPA 1963). Therefore, it is irrelevant
whether Driver’s disk deflects fluid when the
cutting element is moved to the idle position.
However under certain conditions such as when
Driver’s device is inserted in a pipe section
that already has been ported, Driver’s disk will
certainly deflect fluid when the cutter is moved
to the idle position as there is no liner
material between the cutting element and the
disk to hinder the stream of fluid from hitting
the disk.
Although we appreciate the examiner’s position, we do not
agree with his argument, because in our view the disk 620 of
Driver is not capable of performing the intended use recited,
i.e., of "deflect[ing] the liquid-jet stream when the cutting
element is moved to the idle position." While the disk 620 is
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