Appeal No. 1998-2657
Application No. 08/659,359
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The examiner
asserts that the apparatus disclosed by Terry could be used by
putting a golf ball towards the device (10), in which case the
structure recited in claims 11 to 13 would be anticipated,
notwithstanding that this would be a different use of the
apparatus from that disclosed by Terry (as stated in In re
Schreiber, supra, "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").
Appellant states that he does not dispute that a
reference need not disclose the intended use in order to
anticipate, but argues that Terry does not disclose the
structural limitation "a target . . . simulating a golf hole
for putting thereto," as recited in claim 11 (reply brief,
page 2).
After fully considering the record in light of the
arguments presented in appellant's brief, reply brief and
reply, and in the examiner's answer and supplemental answer,
we conclude that claims 11 to 13 are not anticipated by Terry.
Assuming arguendo that Terry's apparatus 10 constitutes a
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