Appeal No. 2004-1194 Page 6
Application No. 09/580,880
claims 16 and 23 are not anticipated by Bobkowicz's rotatable grooved consolidating roll
45.
In our view, claims 16 and 23 are readable on Bobkowicz's rotatable grooved
consolidating roll 25. Bobkowicz's rotatable grooved consolidating roll 25 includes a
plurality of holes or slots 27 at the bottom thereof. As shown in Figure 1 of Bobkowicz,
the holes or slots 27 are formed in both surfaces of the V-shaped groove 26. As to the
various "adapted to" clauses recited in claims 16 and 24, it is our determination that
these clauses are statements of intended use. A statement of intended use does not
qualify or distinguish the structural apparatus claimed over the reference. In re Sinex,
309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962).2 It should be remembered that
claims 16 and 23 are directed to a roller, per se, not to a combination of a roller and thin
disk. It seems the appellants are endeavoring to predicate patentability upon the
method of using the roller to rotate the thin disk. This method is not determinative of the
patentability of claims 16 and 23. The manner or method in which a machine is to be
utilized is not germane to the issue of patentability of the machine itself. See In re
Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); In re Yanush, 477 F.2d,
958, 959, 177 USPQ 705, 706 (CCPA 1973). Furthermore, we agree with the examiner
2 There is an extensive body of precedent on the question of whether a statement in a claim of
purpose or intended use constitutes a limitation for purposes of patentability. See generally Kropa v.
Robie, 187 F.2d 150, 155-59, 88 USPQ 478, 483-87 (CCPA 1951) and the authority cited therein, and
cases compiled in 2 Chisum, Patents § 8.06[1][d] (1991).
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