Appeal No. 2005-1115 Application 09/269,369 diffuser” must extend nozzles 112 into and be fixed mounted in a mixing cylinder such that “the nozzles 112 do not rotate about a central axis of the elongated body 114” in combination with certain process conditions for the operation of “a diffuser” in this relationship (e.g., pages 3-5), because there are no such specific limitations in these respects in the appealed claims. See In re Self, 671 F.2d 1344, 1348-49, 213 USPQ 1, 5 (CCPA 1982). Even if there were, such “limitations” based on process, method and intended use conditions are not limitations that serve to structurally further limit the claimed apparatus or patentably distinguish that claimed apparatus over the prior art. See, e.g., In re Yanish, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d 576, 579-80, 152 USPQ 235, 237-39 (CCPA 1967). In this respect, “[a]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Thus, 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, 808, 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). I have compared appealed claims 1 and 7, as I have interpreted these claims above, with the disclosure, including the drawings, of Jackson and find that the reference would have reasonably described to one of ordinary skill in the art the following “diffuser.” In Jackson Fig. 1 is shown diffuser C which has a tubular stem 20 to which is attached at an end thereof a head 21 (col. 3, ll. 18-33). The head 21 has a body portion 25 to which is attached, through nipples 29 and angle fittings 28, two “jet-forming” nozzles 27 which are “angularly 16Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 NextLast modified: November 3, 2007