Appeal No. 1997-3056
Application No. 08/377,966
Concerning this matter, we are mindful of the Appellant’s view
that the here claimed apparatus distinguishes over the apparatus
claimed in the patent because the former is used for collecting
particulates and solubilizing the analyte contained in these
particulates. From our perspective, however, a proper evaluation
of the aforementioned issues requires application of the well
established legal principal that the manner or method in which an
apparatus or machine is to be utilized is not germane to the issue
of patentability of the apparatus or machine itself. See In re
Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). Thus, for
example, a claimed apparatus does not patentably distinguish over a
prior art apparatus if the latter is structurally indistinguishable
from and is capable of performing the functions of the former. See
In re Yanush, 477 F.2d 858, 959, 177 USPQ 705, 706 and In re Glass,
474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973).
With these considerations in mind, we observe that appealed
claims 1 and 3 define an apparatus embodiment of the type shown in
Figure 3 of the Appellant’s drawing. Similarly, patent claims 1
and 2, inter alia, define an apparatus embodiment of the type shown
in Figure 2 of patentee’s drawing, and this embodiment structurally
corresponds to the Figure 3 embodiment defined by appealed claims
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