Appeal No. 1997-4077
Application No. 08/441,989
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
Here, in view of the fact that the ports or holes 22 in
Shinohara are radially aligned with the tubular coupling members 1,
2 and gasket 3 when the nut 4 is properly tightened, there is a sound
basis to conclude that Shinohara’s ports or holes 22 are inherently capable of
being used in the claimed manner, i.e., for viewing the gasket. Whether
Shinohara’s ports or holes 22
actually are or might be used in such a manner depends upon the performance or
non-performance of a future act of use, rather
than upon a structural distinction in the claims. Stated differently, the
ports or holes 22 of Shinohara would not undergo a metamorphosis to a
different structure simply because they were
used in a pipe joint in the claimed manner. See In re Pearson,
494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974) and Ex parte Masham, 2
USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987).
While Shinohara does not expressly disclose the material
or materials suitable for manufacturing the first and second
tubular coupling members 1 and 2, it is our opinion that the
threaded connection between the nut and coupling member 1 and
the annular protrusions 7 and 8 on the end faces of the
7
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