Appeal No. 2000-2168
Application 09/130,383
the features of the cabinetry and sink to the guard. Signifi-
cantly, appellant's arguments as to each of the three rejections
under 35 U.S.C. § 102 do not traverse any of the examiner's
positions relative to the intended use of the claimed guard.
A different intended use of the same structure as in the
prior art does not prohibit a statutory anticipation rejection,
for example. Indeed, it has been stated by our reviewing court
that "the absence of a disclosure relating to function does not
defeat the Board’s finding of anticipation. It is well settled
that the recitation of a new intended use for an old product does
not make a claim to that old product patentable (case citations
omitted)." In re Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). The court concludes at 128 F.3d 1477,
44 USPQ2d 1431-32, 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 any way 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
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