Appeal No. 98-2164 Page 7
Application No. 08/587,931
lines 15-18). It totally unclear what the examiner's position
is with respect to the above-noted limitation. We do observe,
however, that the examiner in the paragraph bridging pages 4
and 5 of the answer notes that statements of intended use are
insufficient to distinguish structure over the prior art. If
the examiner is suggesting that the above-noted limitation is
merely a statement of intended use which can be dismissed, then
the examiner is simply wrong. Instead, this limitation defines
a non-rigid structure in terms of a function that it must be
capable of performing. See, e.g., Rowe v. Dror, 112 F.3d 473,
479-80, 42 USPQ2d 1550, 1554-55 (Fed. Cir. 1997); In re
Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In
re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52 (CCPA
1976)); In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644
(CCPA 1974) and In re Yanush, 477 F.2d 958, 959, 177 USPQ 705,
706 (CCPA 1973).
In view of the above, the rejections of claims 11 and 13
under 35 U.S.C. § 102(e) and claims 14 and 15 under 35 U.S.C.
§ 103 are reversed.
REVERSED
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