Appeal No. 2005-0381 Page 5
Application No. 09/841,380
structure. The interpretation of the claim must preserve the identity of the thing claimed. Exxon
Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557, 35 USPQ2d 1801, 1804 (Fed. Cir.
1995), cert. denied, 518 U.S. 1020 (1996). Appellants’ claims are to an apparatus and an
apparatus is a mechanical structure and does not include the compositions, materials, and articles
which are being transformed by the machinery. See In re Rishoi, 197 F.2d 342, 345, 94 USPQ
71, 73 (CCPA 1952)(“[T]here is no patentable combination between a device and the material
upon which it works.”); In re Young, 75 F.2d 996, 998, 25 USPQ 69, 71 (CCPA 1935)(Inclusion
of material worked upon by machine as an element in claim may not lend patentability when the
claim is not otherwise allowable.).
In fact, claim 33 recites only two structural apparatus elements, i.e., the “circulating
conductive transfer surface” and the “electrostatic spray head.” The other recitations of the
claim recite how the transfer surface and spray head transfer and apply the coating. But the
patentability of an apparatus claim depends on the claimed structure, not on the use or purpose of
that structure, Catalina Marketing Int’l Inc. v. Coolsavings.com Inc., 289 F.3d 801, 809, 62
USPQ2d 1781, 1785 (Fed. Cir. 2002), or the function or result of that structure. In re Danly, 263
F.2d 844, 848, 120 USPQ 528, 531 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16, 80
USPQ 99, 101 (CCPA 1948). It follows then that if a prior art apparatus possesses all of the
claimed structural characteristics, including the capability of performing the claimed function,
then there is a prima facie case of unpatentability. See In re Ludtke, 441 F.2d 660, 663-64, 169
USPQ 563, 566-67 (CCPA 1971).
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