Appeal No. 1999-1660
Application No. 08/444,242
35 U.S.C. § 100(b) states that "'process' means process, art
or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material." Although
Forbath's device may "be used in any application where time
measuring is required with a hand-held timer," the question
still remains whether the prior art suggested the particular
claimed use or application. The Federal Circuit has held that
"[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-4 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221, USPQ 1125, 1127
(Fed. Cir. 1984). Appellant has basically claimed a new use
for an old timer and switch, which can be patentable under the
statute if such new use is not disclosed or suggested by the
prior art.
The entire disclosure of Forbath is directed to
activities associated with childbirth. Nowhere does Forbath
suggest that the device and method may be used with any
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