Appeal No. 1999-0404 Page 14
Application No. 08/580,256
refrigerating cycle using a refrigerant mixture" does not
constitute a limitation of the claim. Moreover, it is readily
apparent that the heat transfer tube of Chiang has the
inherent capability of being used for a condenser and an
evaporator in a
refrigerating cycle using a refrigerant mixture. In this
regard, it should be noted that while it is well settled that
a claimed functional limitation directed to a new intended use
of an old apparatus does not in and of itself make a claim
drawn to an apparatus patentable over the old apparatus, it is
nevertheless necessary that the old apparatus (e.g., the heat
transfer tube of Chiang) be inherently capable of performing
the recited intended use in order to satisfy the functional
limitation in question. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Second, we agree with the examiner that the notches of
Chiang are inherently formed in a direction where a pressure
gradient in the heat transfer tube is reduced. As set forth
above, the prior art reference need not expressly disclose
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