Appeal No. 2002-1643 Page 7
Application No. 09/140,700
more of the foregoing) is not taught or suggested by the applied prior art (i.e., Julius and
Palumbo).
The examiner's response (answer, pp. 5-6) to this argument by the appellant was
that
a recitation of the intended use of the claimed 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. If the prior art
structure is capable of performing the intended use, then it meets the claim. In a
claim drawn to a process of making, the intended use must result in a
manipulative difference as compared to the prior art. See In re Casey, 152
USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
. . .
In addition while the references do not recite the specific solvent additives as
claimed it is notoriously well known that one or more of these additives are
present in many cleaning solutions, soaps, and the like.
Independent claims 1, 7 and 13 clearly recite the "solvent limitation" as part of
the claimed invention and not as the intended use of the claimed invention. As such,
the examiner has not correctly ascertained the differences between the prior art and the
claims at issue.2 In that regard, based on our analysis and review of Julius and claims,
1, 7 and 13, it is our opinion that one difference is the above-noted "solvent limitation."
Since the examiner has not set forth any rationale in the rejection of independent claims
2 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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