Appeal No. 2003-1390
Application No. 08/989,342
4. Rejection of claims 1-5, 9-12 and 14-24 under 35 U.S.C.
§ 102 as anticipated by Hupp.
Appellant argues that Hupp is limited to a template for
brickwork or stonework and, therefore, cannot anticipate the
claims which require that the template design be in a form other
than a design for simulating brickwork or stonework. See appeal
brief, page 20 and claim 1. According to the examiner, the claim
recitation “such design being other than the design simulating
brickwork or stonework” is a statement of intended use and is not
significant in determining patentability of an apparatus claim.
Examiner’s answer, page 13. We disagree.
As drafted, claim 1 recites a template in the form of planar
structure having a thickness, length and width which accommodate
the desired design. The claim specifies that the desired design
is something other than a design which simulates brickwork or
stonework. In our view, this statement constitutes a structural
limitation wherein the template cannot be constructed in a form
which would produce a design simulating brickwork or stonework.
Accordingly, we find that this language constitutes more than a
mere statement of intended use and is a claim limitation.
The rejection is reversed.
Rejections under 35 U.S.C. § 103.
An invention is unpatentable under 35 U.S.C. § 103 if the
claimed invention as a whole would have been obvious to one of
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