Appeal No. 2001-1719
Application No. 09/069,907
however, that Kurz anticipates claim 1, et seq., notwithstanding the recitations in claim 1
that the first appendage is “adapted to couple to a recessed portion of the expansion card”
and has a “distal end adapted for coupling the first appendage to the recessed portion of
the expansion card.” As explained on pages 5 and 6 of the examiner’s answer:
the appellant fails to positively claim the expansion card, but does claim the
distal end of the first appendage being adapted for coupling the first
appendage to the recessed portion of the expansion card. See claim 1. The
expansion card is nominally recited. Therefore, Kurz must provide for the
ability of coupling the first appendage to another component. Please note a
recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the prior art. If the prior
art structure is capable of performing the intended use, then it meets the
claim. In a claim drawn to a process of making, the intended use must result
in a manipulative difference as compared to the prior art. See In re Casey,
152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA
1963).
* * * * *
appellant fails to positively recite the recessed portion of an expansion card
which appellant repeatedly relies on for patentability.
We do not consider this rejection to be well taken. While we agree with the
examiner that the “adapted to” recitations in claim 1 do not cause the expansion card to be
included as part of the claimed combination, see In re Dean, 291, F.2d 947, 130 USPQ
107, 111 (CCPA 1961), we do not agree that there is no structural difference between the
subject matter of claim 1 and Kurz, or that Kurz is capable of performing
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007