Appeal No. 2002-1214
Application No. 09/062,046
Cir. 2002) (“if the brief fails to meet either requirement, the Board is free to select a
single claim from each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim”).
Rather than reiterate the conflicting viewpoints advanced by the Examiner
and Appellants concerning the above-noted rejections, we refer to the Answer and
the Briefs. For the reasons set forth below, and in the Answer, we will sustain the
§102(b), §103(a) and § 112, second paragraph rejections.
OPINION
I.
The Examiner rejected claims 1, 2, 21, 25, 38 and 39 under 35 U.S.C.
§ 102(b) as anticipated by Miller. We select claim 38 as the representative claim for
this rejection.
Claim 38 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
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