Appeal No. 1999-0404 Page 12
Application No. 08/580,256
The appellants argue (brief, p. 6; reply brief, pp. 1-2)
that nowhere in Chiang is it disclosed that the notches should
be formed in a direction where a pressure gradient in the heat
transfer tube is reduced. The appellants also argue (brief,
p. 8-10; reply brief, pp. 4-5) that the preamble of claim 1
(i.e.,
for a condenser and an evaporator in a refrigerating cycle
using a refrigerant mixture) gives life, meaning and vitality
to the claim and must be given patentable weight.
The arguments advanced by the appellants in their brief
and reply brief do not convince us that the subject matter of
claim 1 is novel for the following reasons.
First, the manner or method in which a machine (e.g., a
heat transfer pipe) is to be utilized is not germane to the
issue of patentability of the machine (e.g., the heat transfer
pipe) itself. In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967). A statement of intended use does not qualify
or distinguish the structural apparatus claimed over the
reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305
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