Appeal No. 1999-2556
Application 08/774,848
wall 6, poison bait compartments 8, cylindrical wall 9,
partitions 7 and rim 4 collectively meeting the recitation of
the “base portion for containing a plurality of different
odorous substances” and Watson’s canopy 12 meeting the
recitation of the “cap portion for covering said substances.”
The appellant’s position (see pages 14 through 17 in the
brief) that Watson is not an anticipatory reference because it
does not disclose different odorous substances which attract
desirable creatures and repel undesirable creatures is not
persuasive because it is not commensurate with the actual
scope of claim 44. The “wherein” clause in the claim relating
to the odorous substances merely sets forth an intended use of
the claimed device; it does not recite such odorous substances
as part of the claimed device. Since the Watson exterminator1
is inherently capable of being so used, it fully responds to
the claim language at issue. This is in accord with the well
settled principle that the recitation of an intended use of an
old product does not make a claim to that old product
1In contrast, independent claims 1 and 25 do recite at least one odorous
substance as part of the claimed device or system.
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