Appeal No. 1999-0551 Page 10
Application No. 08/636,431
263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1469, 15
USPQ2d 1525, 1528 (Fed. Cir. 1990). The functional recitation of “for preventing particulate matter
from penetrating into said sidewall from the inner surface” merely requires that the inner membrane be
of a structure capable of preventing particulate matter penetration. See In re Yanush, 477 F.2d 958,
959, 177 USPQ 705, 706 (CCPA 1973)(Appellant’s use limitation does not impart a structural feature
different from those of the prior art where the prior art structure inherently possesses the capability of
performing the claimed function). An inner membrane such as that of Zievers has the inherent capability
of preventing particulate matter penetration at the location it is applied even if that capability is not used.
The claim does not recite that particulate matter be prevented from penetrating the entire sidewall.
Moreover, the claims could be easily amended to make the extent of coverage clear.
Obviousness over Connolly and Zievers
Both Connolly and Zievers describe a filter element for separating particulates from gas. As
required by claim 5, the filter element of each of the references has a filter member with a porous
sidewall and a membrane of finer porosity on the outer surface (Connolly, col. 2, lines 32 -34, lines 56-
57; Zievers, col. 1, lines 62-67, col. 2, lines 60-62). In the filter element of Zievers, thin skin or
membrane 16 (col. 3, lines 26-27) is both present on the outer surface and also is “received in an
annular groove 22 in the cap 18” (col. 3, lines 45-46). Figure 2 shows twine-like wrapping 14, which
has the membrane 16 applied to it, extending around the ends of tube 12 onto the inner surface.
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