Appeal No. 2003-0583
Application No. 09/270,688
claims "read on" something disclosed in the reference, i.e., all
limitations of the claim are found in the reference, or "fully
met" by it. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772,
218 USPQ 781, 789 (Fed. Cir. 1983). Instant claim 13 is drawn to
a machine, rather than a process. The machine that the claim
sets forth is compared to the prior art -- not how one may put
the machine to use. See In re Hack, 245 F.2d 246, 248, 114 USPQ
161, 162 (CCPA 1957)("[T]he grant of a patent on a composition or
machine cannot be predicated on a new use of that machine or
composition"). See also In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997)("It is well settled that
the recitation of a new intended use for an old product does not
make a claim to that old product patentable").
However, claim 13 also requires an insole-milling station
that includes a milling assembly for forming a custom-made
insole. Yanagida's system is adapted for engraving a medal
(e.g., col. 3, ll. 5-21). The system could not be considered to
meet the requirements of an insole-milling station capable of
forming a custom-made insole. I do not consider the recitation
of "insole-milling station" to be functional, and do not consider
the limitation to be met by the reference. Claim language should
be read in light of the specification as it would be interpreted
1919
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