Appeal No. 2004-1945 Page 7
Application No. 09/524,213
It is well settled that if a prior art device inherently possesses the capability of
functioning in the manner claimed, anticipation exists whether there was a recognition
that it could be used to perform the claimed function. See, e.g., In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See also LaBounty Mfg.
v. Int'l Trade Comm'n, 958 F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992)
(in quoting with approval from Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823,
828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was intended is irrelevant, if it
could be employed without change for the purposes of the patent; the statute
authorizes the patenting of machines, not of their uses. So far as we can see,
the disclosed apparatus could be used for "sintering" without any change
whatever, except to reverse the fans, a matter of operation.
Moreover, the manner or method in which a machine is to be utilized is not
germane to the issue of patentability of the machine itself. In re Casey, 370 F.2d 576,
580, 152 USPQ 235, 238 (CCPA 1967). 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). 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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