Appeal No. 2004-1108
Application 09/756,833
9). Further finding that “conventional foldable scooters are of many different sizes,” the
examiner contends that
Appellant’s backpack, as shown in figure 1, would be large enough to hold a foldable
scooter, but there appears to [sic, be] considerable extra room or space depending upon
the actual size of the scooter to be placed within the backpack and therefore it would
appear that appellants [sic] backpack is as “specifically sized” to hold a foldable
scooter as the backpack of Rota. [Id.]
The examiner further points out that, contrary to appellant’s arguments, no claim limitation
excludes an “hourglass” back support plate, and that the back support plate is “vertically
elongated” as claimed because it “is taller than it is wide” (id.).
We have carefully compared the disclosure of Rota, including the figures thereof, with
the claimed backpack encompassed by appealed claim 1 as we have interpreted this claim above.
We find that the examiner has correctly identified the structural components in the backpack of
Rota which correspond to and satisfy each of the structural component limitations of the claim
arranged as specified therein. Indeed, appellant does not explain how the language of claim 1
excludes the “hourglass” shape of the rigid back support plate or the “padding” of the backpack
of Rota which appellant contends is distinguishing.
Appellant further argues the intended use of the claimed backpack in contending that the
same “is designed specially to accommodate the shape and weight of a foldable, wheeled
scooter,” and not “to accommodate heavily loaded rucksacks,” that is, backpacks, and that “the
present invention teaches away from the intent of Rota” because the claimed backpack is not
“designed for “school use’” (see above, page 6; all emphasis deleted).
We are not convinced by appellant’s arguments because “[i]t 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. [Citations omitted.]” Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431.
Furthermore, as the examiner points out, “the functional limitation of holding a scooter” does not
distinguish the claimed backpack from the backpacks described in Rota which otherwise appear
to be of the same structural components and have an internal volume that will receive, contain
and retain the scooter such that the scooter will not fall out of the backpack when the backpack is
reasonably carried, as specified in claim 1 as we have interpreted this language above. Thus, the
burden has shifted to appellant to show that the backpacks of Rota do not inherently posses the
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