Appeal No. 1999-0419
Application 08/383,483
32, that "Schrieber’s contention that his structure will be used to dispense popcorn does
not have patentable weight if the structure is already known, regardless of whether it
has ever been used in anyway in connection with popcorn (emphasis added)." Such
reasoning obviously applies to rejections under 35 U.S.C. § 103. Schrieber confirms
the guidance provided in Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Int.
1987), that a recitation with respect to the manner in which a claimed apparatus is
intended to be employed does not differentiate the claimed apparatus from a prior art
apparatus satisfying the claimed structural limitations. Note also Ex parte Wikdahl,
10 USPQ2d 1546, 1548 (Bd. Pat. App. & Int. 1989) and In re Casey, 370 F.2d 576,
580, 152 USPQ 235, 238, CCPA 1967).
Furthermore, appellants’ repeated urging in the brief and reply brief that the
references respectively teach away from a feature of the claimed invention is
misplaced. As to the specific question of "teaching away," our reviewing court in In re
Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994) stated "[a] reference
may be said to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the applicant." Of
the rejections sustained, we do not find any such discouragement or leading away.
We observe that pages 1 and 2 of appellants’ specification as filed contains
general survey comments with respect to the prior art video recording arts. They
recognize that videocassette recorders (VCRs) may be used by operators or not, and
may be stand alone units for recording broadcast television signals. Portable
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