Appeal No. 1998-2826
Application No. 08/598,687
recited in a claim must be given effect in order to determine
what subject matter that claim defines. In re Wilder, 429
F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). The language
“an elongated plate member adhesively bonded to a surface of a
nail shell with an adhesive agent” in claim 3 is not a
statement of intended use, but a positive limitation which
cannot be ignored in applying prior art.
The examiner is of the opinion that the recitation of a
“nail shell” can be ignored in applying the prior art because
a “nail shell” is a part of the human body, thus non-statutory
subject matter (answer, pages 4 and 5). This approach is
untenable as explained in In re Miller, 418 F.2d 1392, 1396,
164 USPQ 46 (CCPA 1969). The Miller case involved a rejection
of claims to the combination of a measuring device, indicia
specifying a given volume and a legend specifying the ratio of
the given volume to the actual volume of the measuring device.
As in this case, the examiner in the Miller case refused to
give any patentable weight to what the examiner considered to
be non-statutory subject matter, that is, the printed matter
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