Appeal No. 1999-2628 Page 7
Application No. 08/652,723
4 5 6
disclosures in Laing (Figure II), Schweizer (Figure 1) and Koppel (Figure 5; column 4, lines
7-15) of comb-teeth which are not tapered throughout their free ends in the direction transverse
to the stroke direction belies any such notion. Laing (page 1, lines 49-53) and Koppel (column
4, lines 7-15) even express an intent to have the hair enter the gaps between the teeth.
Accordingly, we are not persuaded by the appellant's arguments that the examiner's
characterization of the detents taught by Wall as "comb-teeth" is unreasonable.
While we appreciate that neither Wall nor Maggiore teaches or suggests passing the hair
cutting guide apparatus through a person's hair and that the detents taught by Wall, in
cooperation with the channel and cushion on the other confronting face, are intended to lift a
strand or two onto the crest of each detent , the Maggiore apparatus, modified as proposed by7
the examiner in view of Wall, is inherently capable of the use recited in the "whereby . . ."
clause. In particular, it is possible to position the hair of a human being intermediate the jaw
members with the detents penetrating through the hair and to move the hair cutting guide
apparatus through and along the length of that hair to a desired position at which the edges of
the jaw members establish a guide for cutting the hair, such that the hair is combed by such
4U.S. Patent No. 1,108,375, issued August 25, 1914 (copy appended).
5U.S. Patent No. 2,397,696, issued April 2, 1946 (copy appended).
6U.S. Patent No. 5,318,051, issued June 7, 1994 (copy appended).
7It is well settled that the recitation of an 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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