Appeal No. 1999-0832 Page 6
Application No. 08/147,793
The examiner responds to appellants' assertions (answer,
page 10) by stating that "[a] recitation of the intended use
of the 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," and that "[i]f the prior art structure is capable of
performing the intended use, then it meets the claim." The
examiner further asserts (id.) that "the feature upon which
applicant relies (i.e., the polarizer is adjusted
independently of any exposure feature) are [sic] not recited
in the rejected claim(s)."
We consider the above-quoted limitations of claim 1 to
establish a broad recitation of structure. Independent claim
7 contains identical language. From our review of Suzuki
(col. 3, lines 12-16) we find that the direction of the
polarizing plate is changed in accordance with the selected
magnification, and that (col. 3, lines 29-31) "the quantity of
light is controlled by rotating the polarizing plate 8 in
association with the zooming." Suzuki further discloses (col.
3, lines 40-43) that "the quantity of light incident on the
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