Appeal No. 2002-1123
Application No. 09/110,987
directed to a dispenser, not to a method of covering the palm of
an adult human hand, as the appellant would apparently have us
believe. As pointed out by the examiner (answer, page 4), the
absence in the prior art of a disclosure related to function
does not preclude a finding of unpatentability where the
structural limitations of the claimed product are otherwise
disclosed or suggested in the prior art. In re Sinex, 309 F.2d
488, 492, 135 USPQ 302, 305 (CCPA 1962)(holding that a statement
of intended use in a claim fails to distinguish over the prior
art apparatus); In re Wolfe, 251 F.2d 854, 855, 116 USPQ 443,
444 (CCPA 1958)(“The characterization of a massage device for
‘dental’ use, as distinguished from use on other parts of the
body, is not a patentable distinction since in the apparatus
claims before us it points to no structural difference.”);
In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 162 (CCPA
1957)(explaining that the grant of a patent on a composition or
machine cannot be predicated on a new use of that composition or
machine).
The appellant contends that the relied upon prior art
references do not disclose or suggest a solution to the problem
described in the present application. (Second appeal brief,
page 4.) This argument is also unpersuasive. Although the
reason or motivation provided in the prior art is not the same
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