Appeal No. 2000-0487 Page 11
Application No. 08/856,228
First, we agree with the examiner (answer, p. 8) that
claim 14 is directed to the slide-out tray per se and not to
the combination of a slide-out tray in a carton. In that
regard, we note the appellant employs only intended use
phraseology in claim 14 (for securing an article in a carton;
for securing an upper portion of said article; and for
securing a lower portion of said article). 3
Second, we do not agree with the appellant that claim 14
is patentable since Jones fails to show a slide-out tray for a
carton. It is our determination that Jones clearly discloses
a display and shipping package that is inherently capable of
being placed/inserted in a carton. Thus, the limitation of
claim 14 of a slide-out tray for a carton is fully met by
Jones.
3A statement of intended use does not qualify or
distinguish the structural apparatus claimed over the
reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305
(CCPA 1962). There is an extensive body of precedent on the
question of whether a statement in a claim of purpose or
intended use constitutes a limitation for purposes of
patentability. See generally Kropa v. Robie, 187 F.2d 150,
155-59, 88 USPQ 478, 483-87 (CCPA 1951) and the authority
cited therein, and cases compiled in 2 Chisum, Patents §
8.06[1][d] (1991).
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