Appeal No. 2003-1501
Application 09/756,929
longitudinal members connected by cross bars supported by suitable chairs on the said palette.”
75 F.2d at 997, 25 USPQ at 70. The court stated that “claim 6 . . . does include as an element the
material being worked upon,” holding that “its inclusion may not lend patentability since the
claim is not otherwise allowable.” 75 F.2d at 998, 25 USPQ at 71. We note here that in the
precedential decision in Otto, supra, the predecessor court to our reviewing court considered
appealed claim 1 drawn to an “article of manufacture, a core member for hair curlers comprising
a body of elastically resilient foam material, the hair being wound directly on said body and said
body carrying a hair weaving lotion,” noting that “[i]n use, the core member may have the tresses
of hair wound on it while the core and the hair are both dry” with lotion subsequently applied and
forced into the core. 312 F.2d at 938, 136 USPQ at 458. The court held that “[i]t seems
appellants are endeavoring to predicate patentability upon a certain procedure for curling hair
using this device . . . [and] [t]his process is irrelevant as is the recitation involving the hair being
wound around the core insofar as the determination of whether these particular claims should be
allowed or rejected,” citing in this respect, inter alia, Roshoi and Young for the proposition “that
the inclusion of the material or article worked upon by a structure being claimed does not impart
patentability to the claims.” 312 F.2d at 939, 136 USPQ at 459.
We are also not persuaded by appellant’s arguments based on Muzquiz (brief, pages 12-
13; reply brief, pages 7-8), a non-precedential decision of this Board. It is apparent that in the
passage cited by appellant (brief, page 13), the prior panel expressed the opinion that “the
claimed subject matter is a combination wherein a specific form of dispenser and a specific form
of polyethylene bags on a roll are set forth together as defining” the claimed invention (slip
opinion, page 7; underline emphasis in original; italics emphasis supplied). Indeed, it is apparent
from the opinion that the prior panel found that the appealed claims required that the bags must
be of a certain structure to conform to the structure of the dispenser (slip opinion, page 6). On
this basis, the prior panel did not agree with the examiner that Masham, supra, also a non-
precedential decision of this Board, pertained to the facts of the case without discussion (slip
opinion, pages 7-8).
The facts of record before us are more akin to the authority that we rely on above and to
which we compare Masham. Indeed, in the same manner as in Rishoi, Otto, and Young, as well
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