Appeal No. 2003-0778 Page 9
Application No. 09/564,131
on page 9 of the answer, claim 4 does not require the openings themselves to perform
the function of controlling charcoal burning. Rather, claim 4 merely recites that the
means for retaining charcoal to control burning includes a plurality of openings.
Second, for the reasons discussed above, we do not interpret the “means for ...”
language of the claims as a recitation under 35 U.S.C. § 112, sixth paragraph. The
slots a1 and the punchouts to form the lugs a3 both reasonably appear to be fully
capable of functioning to control burning by permitting passage of air therethrough
when used in combination with a barbecue grill and charcoal briquets.3 Accordingly, the
functional language of claim 4 does not in this instance serve to patentably distinguish
over the band of Lamkin. See, e.g., In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 230-31 (CCPA 1971) and Ex parte Cordova, 10 USPQ2d 1949, 1950-51 (Bd. Pat.
App. & Int. 1987). It is also well settled that the recitation of an intended use for an old
product does not make a claim to that old product patentable. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Thus, we shall also sustain the
rejection of claim 4 as being anticipated by Lamkin.
Appellant makes a similar argument with respect to the rejection of claim 4 as
being anticipated by Jones. Specifically, appellant appears to concede that the band of
Jones comprises a plurality of openings (air holes 2). These air holes likewise appear
reasonably capable of functioning to control the burning when used in combination with
3 As discussed above, claim 4 does not recite the combination of the divider, grill and charcoal
briquets.
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