Appeal No. 98-2123
Application No. 08/326,669
this may be true, the recitation of the sleeve "being adapted
to permit" repeated receipt and withdrawal of a test strip
does not require that a test strip actually be received and
withdrawn from the sleeve. Instead, this recitation merely
sets forth a function which the sleeve must be structurally
capable of performing (see, e.g., In re Venezia, 530 F.2d 956,
959, 189 USPQ 149, 151-52 (CCPA 1976)) and whether a test
strip actually is or might be inserted into the sleeve of
Grover depends upon the performance or non-performance of a
future act of use rather than a structural limitation in the
claim. Since the spacer 55 of Grove has the capability of
repeated receipt into and withdrawal from the sleeve, there is
a sound basis to conclude that Grove's sleeve likewise has the
capability of repeated receipt and withdrawal of a test strip.
It is well settled that if a prior art device inherently
possesses the capability of functioning in the manner claimed,
anticipation exists regardless of whether there was a
recognition that it could be used to perform the claimed
function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See also In re Spada,
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