Appeal No. 2002-0515
Application No. 09/222,092
We are not persuaded by Appellants’ argument. Appellants’ invention is directed to
an apparatus. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468, 15 USPQ2d 1525, 1528 (Fed.
Cir. 1990). Therefore, the patentability of an apparatus claim depends on the claimed
structure, not on the use or purpose of that structure, Catalina Marketing Int’l Inc. v.
Coolsavings.com Inc., 289 F.3d 801, 809, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002), or the
function or result of that structure. In re Danly, 263 F.2d 844, 848, 120 USPQ 528, 531
(CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16, 80 USPQ 99, 101 (CCPA 1948).
When, as in the present case, the prior art structure possesses all the claimed characteristics
including the capability of performing the claimed function, then there is a prima facie case
of unpatentability. In re Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563, 566-67 (CCPA
1971). In the instant case the binder is not a component of the claimed apparatus.
Moreover, the apparatus of both DeVries and the claimed apparatus detect UV fluorescence
emitted from the binder. The benzocyclobutene used in the binder of DeVries is inherently
fluorescent thus eliminating the need for adding an additional fluorescent component.
(Col. 1, ll. 64-68).
Appellants argue that the nature of the materials being detected by the DeVries
apparatus is different from that being monitored by the claimed apparatus. (Brief, p. 5).
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