Appeal No. 2003-1501
Application 09/756,929
element of the claims)” (brief, page 11; emphasis in original deleted). We do not agree with
appellant’s position with respect to Roshoi.
In Roshoi, appealed claim 10 was drawn to “[a] device for use as a churn and
butterworker comprising” a drum having a roughened surface “and a film of liquid covering
exposed portions of said” surface “whereby a butter contacting surface is secured which surface
when moistened will not readily adhere to butter.” 197 F.2d at 342, 9 USPQ at 71. The
predecessor court to our reviewing court stated:
Counsel for appellants, in their contention that the involved claims define a new
and novel structure, include the film of liquid which covers the exposed portion of the
particles [of the roughened surface] and therefore argue that a new structure is formed
by reason of the presence of this liquid film as one of the elements of the structure.
We agree with the reasoning of the board that the liquid film is not a structural
limitation and therefore cannot impart patentability to those claims which are
otherwise unpatentable. In our opinion there is no patentable combination between a
device and the material on which upon which it works. [Citation of Morgan Envelope,
supra, and Hughes, supra, omitted.]
It is clear that when the structure is completed there is no liquid therein and also
after the operation of the butter working is over the film of liquid will evaporate and
disappear. . . . [197 F.2d at 344, 9 USPQ at 73.]
We are of the view that the precedential decision in Rishoi makes clear that the “liquid
covering the exposed” surface is derived from the material on which the apparatus was intended
to work and disappears when the processed material is removed from the apparatus, and thus,
serves as no structural limitation on and forms no patentable combination with the apparatus.
Therefore, contrary to appellant’s arguments, the court in Rishoi did consider a claim in which an
apparatus was purposely combined with the work piece. Binding precedent to the contrary is not
found in Morgan Envelope as appellant contends, because, as appellant admits, the Supreme
Court in that case did not rule on the issue. Appellant advances no separate argument in support
of the contention that Hughes, earlier decided by the Rishoi court, is improperly relied on by that
court in Rishoi.
The examiner did cite, inter alia, Young, supra (answer, page 9). In this precedential
decision, the predecessor court to our reviewing court squarely considered in appealed claim 6 “a
machine for making concrete beams” having in combination, “concrete reinforced structures with
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