Appeal No. 98-2109
Application No. 08/500,315
located "proximate the idle position" of cutting element
(nozzle) 604, as claimed, it cannot perform the function of
deflecting the jet from the nozzle 604 when the nozzle is in
the idle position (Fig. 7), because, since nozzle 604 does not
emit a jet when it is in that position there is no jet to be
deflected; as disclosed by Driver at col. 5, lines 27 to 36
(see also claim 5), supplying fluid to cutter 600 will cause
the nozzle 604 to move outward (from the Fig. 7 idle position)
and contact the inside wall of the liner (Fig. 8). The
examiner’s statement in the last sentence of the above-quoted
argument is not understood, since a stream of fluid is not
emitted from Driver’s nozzle 604 when it is in the idle
position.
Our conclusion that claim 1 is not readable on the Driver
apparatus is not contrary to the Otto or Casey decisions cited
by the examiner. Unlike those cases, the present limitation2
does not constitute "a method concept" which may not be relied
on to distinguish a structural claim over the prior art (Otto,
2See also In re Schreiber, 128 F.3d at 1477, 44 USPQ2d at
1431 ("the recitation of a new intended use for an old product
does not make a claim to that old product patentable").
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