Appeal No. 98-2109
Application No. 08/500,315
id. ), or a manner or method of using the claimed machine
"which is not germane to the issue of patentability of the
machine itself" (Casey, id.). Rather, the limitation is in
the nature of a structural limitation, in that it effectively
requires a cutting element which is capable of emitting a
liquid-jet stream when in the idle position; otherwise, there
would be no stream for the disk to deflect. Driver does not
disclose a cutting element which can operate in such a manner,
and therefore does not anticipate
claim 1. We note in this regard that "[t]here is nothing
intrinsically wrong in defining something by what is does
rather than by what it is." In re Echerd, 471, F.2d 632, 635,
176 USPQ 321, 322 (CCPA 1973).
Accordingly, the rejection of claim 1, and therefore of
claims 2, 3, 5 and 9 to 11 dependent thereon, will not be
sustained.
Conclusion
The examiner’s decision to reject claims 1 to 3, 5 and 9
to 11 is reversed.
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007