Appeal No. 2000-2154
Application 09/136,761
engageable by the annular side surface of tool 56 . Moreover,
3
and more fundamentally, the annular side surface of the tool
56 would clearly be capable of engaging the side edge of a
3
flat workpiece; the fact that it might not be used for that
purpose in the CNC machine of Mdller is of no relevance to the
question of anticipation of claim 1, because that claim is
drawn to the tool per se, rather than the tool in combination
with the CNC machine tool. As stated in In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), “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.” See also In re Casey, 370 F.2d 576, 580, 152
USPQ 235, 238 (CCPA 1967).
Appellant also argues that the annular surface of the
tool 56 of Mdller does not have “a profile corresponding to
3
the profile of said side edge [of the flat workpiece]”, as
recited in claim 1. Here again, however, the workpiece is not
claimed as part of the combination. As disclosed by Mdller,
supra, the grinding wheel 56 has a “quasi-variable-shape
3
profile,” which would be capable of corresponding to a side
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007