Appeal No. 2000-1862
Application 08/834,061
article that is “for” or “capable” of use in a particular type of apparatus to perform a method with
that apparatus.7 Cf. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861, 868, 228 USPQ 90, 94 (Fed.
Cir. 1985), overruled on other grounds, Nobelpharma AB v. Implant Innovations, 141 F.3d 1059,
1068, 46 USPQ2d 1097, 1104 (Fed. Cir. 1998) (The claim language “adapted to remain in a
liquid, nonpolymerizing state for prolonged periods of time while in contact with air and to
polymerize to the solid state in the absence of air and upon contact with metal surfaces . . .” was
interpreted by the court “as merely language of intended use, not a claim limitation. [Citation
omitted; emphasis supplied.]”); In re Pearson, 494 F.2d 1399, 1402-03, 181 USPQ 641, 644
(CCPA 1974) (The claim language “for reducing pops and unsound kernels in peanut plants . . .
[and] when applied to the foliage of a peanut crop will substantially reduce the formation of pops
and unsound kernels” was held by the court to “merely set forth the intended use, or a property
inherent in, an otherwise old composition. [Emphasis supplied.]”); Wiggins, 397 F.2d at 357-59,
158 USPQ at 200-01 (The independent product claim recited “[a] pharmaceutical preparation in
dosage unit form adapted for administration to obtain an analgesic effect,” and the court stated
that “[w]ere the [reference] to describe or render obvious such a composition, . . . that
composition, of course, would not appear to differ in any material manner from the composition
of appellant’s claim, no matter to what ultimate use it would be put. [Footnote omitted; emphasis
supplied.]”).
In comparing the claimed rare earth-doped sol-gel glass monolith product as
encompassed by appealed claims 37, 3, 5 and 7, as we have interpreted these claims above, with
the disclosure of Orignac, we find that, as a matter of fact, the examiner has established a prima
facie case of anticipation under § 102(a) by pointing out where each and every element of the
claimed invention, arranged as required by the claim, is described identically in the reference
7 Indeed, if the limitation was given effect as limiting the claims to encompassing the described
product only in the stated use environment of calibrating the specified type of optical instrument,
such that the same product in another use environment would not be encompassed by the
appealed claims as appellant argues, then the appealed claims would be substantial duplicates of
the method claims which are said by counsel at oral hearing to be of record in continuation
application 09/599,231 and have been allowed by the examiner, and would be considered by the
examiner on that basis.
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