Appeal No. 2004-2335 Page 12
Application No. 09/867,495
Appellant has not specifically contested the examiner's above-noted combination
of Vasilopoulos and Thurston, but has urged instead (brief, pages 5-6) that the clip (92)
of Vasilopoulos is not intended to be secured to a support and that it would not be
obvious to use the clip (92) to secure to a support. In that regard, I believe appellant has
lost sight of the fact that while features of an apparatus may be recited either structurally
or functionally, claims directed to an apparatus must be distinguished from the prior art
in terms of structure rather than function, because apparatus claims cover what a
device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). In this case, I agree with
the examiner that the bungee cord structure resulting from the combination of
Vasilopoulos and Thurston is structurally the same as that broadly set forth in claim 5 on
appeal and is also fully capable of performing the intended use as recited in claim 5.
For the above reasons, I would sustain the examiner's rejection of claim 5 under
35 U.S.C. § 103(a) as being unpatentable over Vasilopoulos in view of Thurston.
Given appellant's indication on page 5 of the brief that the claims on appeal "stand
or fall together," I further conclude that dependent claim 4 should be considered to fall
with independent claim 5 and that the examiner's rejection of claim 4 under 35 U.S.C.
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