Appeal No. 2005-0478 Page 5
Application No. 10/064,363
must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at page 3 of the
brief, that the claim distinguishes over the Uchida patent as the claimed “insulator
portions extending at least along the side of said enlargements” are “for
protecting windings . . . from damage by the winding needle.” We find this
argument unpersuasive.
We find that “for protecting windings . . . ” is an intended use of the
Appellants’ claimed “insulator portions extending at least along the side of said
enlargements.” A recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention and the prior art in
order to patentably distinguish the claimed invention from the prior art. If the
prior art structure is capable of performing the intended use, then it meets the
claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto,
136 USPQ 458, 459 (CCPA 1963). In the situation before us, figure 4(b) of
Uchida shows that the opening for the nozzle (42) of the winding machine is
between insulator portions (32) extending at least along enlargement (12). The
insulator portions are inclined into slot (20). We find that as a nozzle (42) is
inserted into slot (20) the insulator portion (32) would bend into the slot and
protect at least some of the windings from damage by the nozzle (42).
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