Appeal No. 1998-1912
Application No. 08/780,744
Knudsen is well founded, and appellants’ position to the
contrary is not. Concerning argument (1) , the preamble 2
statement of claim 1 that the blanks “are convertible into
component parts for smoker’s products” is quite broad, as
recognized by the examiner, and does not serve to distinguish
over Knudsen when given it proper weight. The preamble
statement in question describes a future condition of the
blanks which may or may not later happen; however, what may or
may not happen is not part of the claimed invention. In re
Venezia, 530 F.2d 956, 958-59, 189 USPQ 149, 152 (CCPA 1976).
Here, claim 1 does not contain any present structural
limitation of the blank that is not met by Knudsen. In this
regard, the foil inserts of Knudsen reasonably appear to be
capable of being “convertible” into a component part of a
packet for smokers' products. In any event, since the
unillustrated containers (i.e., jars, bottles or tubs) of
Knudsen reasonably appear to be capable of use in packaging a
2Appellants’ companion argument to the effect that Knudsen
is non-analogous art fails at the outset with respect to the
standing anticipation rejection because “the question of
whether a reference is analogous art is irrelevant to whether
that reference anticipates.” In re Schreiber, 128 F.3d 1473,
1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
6
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