Appeal No. 1999-1721 Page 5
Application No. 08/734,125
by claim 2 (brief, page 8). Appellant further argues that "a rail and an elongated shaft portion,
which includes the claimed plurality of ball holding means, are set forth in claim 2 on appeal as
two separate elements" (brief, page 9).
We hasten to point out that appellant's claim 2 does not, as appellant suggests, positively
recite both a rail and an elongated shaft portion. Rather, appellant's claim 2 is directed only to
a ball holder "for" a retainerless saddle and "to be used" when the retainerless saddle is taken
out of a rail. From our viewpoint, the rail (2) of Hara possesses all of the structural limitations
of appellant's claim 2 and reasonably appears to be fully capable of functioning in the manner called
for in claim 2 (i.e., for positioning within the recess of a retainerless saddle, only when the saddle is
taken out of a second rail, independent from the disclosed rail, to prevent steel balls from falling off the
saddle when the saddle is slid off the second rail). Accordingly, the functional language of claim 2 does
not in this instance serve to patentably distinguish over the rail of Hara. See, e.g., In re Swinehart, 439
F.2d 210, 212-13, 169 USPQ 226, 230-31 (CCPA 1971) and Ex parte Cordova, 10 USPQ2d
1949, 1950-51 (Bd. Pat. App. & Int. 1987).
Although appellant is correct that Hara does not address that the disclosed track rail is to
be used in the manner claimed, the absence of a disclosure relating to function does not defeat
the examiner's finding of anticipation. 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. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431(Fed. Cir. 1997).
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