Appeal No. 1998-1357
Application No. 08/348,744
must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a
single prior art reference. See Kalman v. Kimberly-Clark
Corp., supra. The structural limitations recited in
appellants' claims are all found in the Searle reference, upon
which the examiner relied. Appellants argue that "the Searle
burial vault is completely unsuitable for use as an above
ground gasoline storage tank" (brief, page 16). Although
appellants are correct that Searle does not address the use of
the disclosed structure to store gasoline or flammable
liquids, the absence of a disclosure relating to function does
not defeat the finding of anticipation. It is well settled
that the recitation of a new intended use for an old product
does not make a claim to that old product patentable. See In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997). Accordingly, appellants' contention that their
structure will be used to store gasoline or flammable liquids
above ground does not have patentable weight if the structure
is already known, as it is in Searle, regardless of whether
the Searle structure (vault) has ever been used for the
storage of gasoline or flammable liquids above ground.
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