Appeal No. 2003-0087 9
Application No. 09/512,164
regarding the failure of Pierce to overcome the deficiencies of Fontaine to render the
subject matter of claim 1 obvious is simply not germane to the novelty issue discussed
above.
Appellants’ recurring argument in the main and reply briefs concerning the
statements of use and/or function in the claims and the need to consider such language in
applying the prior art is noted. Our courts of review have repeatedly indicated that a
recitation with respect to the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art apparatus
satisfying the structural limitations of that claimed. See, for example, In re Yanush, 477
F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028,
1032, 168 USPQ 530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ 235,
238 (CCPA 1967); and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
Accord for this proposition is found in In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997), wherein the Court noted that “[i]t is well settled that the
recitation of an new intended use for an old product does not make a claim to that old
product patentable.” In the present case, we have considered the functional limitations
appearing in the preamble and in paragraph (e) of claim 1 and agree with the examiner’s
position to the effect that they relate to intended use of the claimed device, that they do
not lend patentable weight to the presently claimed subject matter, and that the actuator of
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