Appeal No. 2001-2413
Application No. 09/167,894
in the answer) is reasonable on its face, and has not been
specifically challenged by the appellants. The only recitation
in the claim pertaining to gene therapy pharmaceuticals appears
in the preamble where it merely defines the intended use of the
claimed apparatus (“A perfusion apparatus for the prolonged
delivery of gene therapy pharmaceuticals in a perfusate to target
tissues”). It is not apparent, nor have the appellants pointed
out, why the apparatus disclosed by Sadri is not inherently
capable of the prolonged delivery of gene therapy pharmaceuticals
in a perfusate to target tissues. Moreover, it is well settled
that the recitation of an intended use of an old product, even if
such use is new, does not make a claim to that old product
patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). In other words, the manner or
method in which a machine is to be utilized is not germane to the
issue of patentability of the machine itself. In re Casey, 370
F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). Hence, the “gene
therapy pharmaceuticals” language in claim 1 fails to distinguish
the apparatus recited therein over that disclosed by Sadri.
Accordingly, we shall sustain the standing 35 U.S.C.
§ 102(e) rejection of claim 1 as being anticipated by Sadri.
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