Ex Parte Shane - Page 16

          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              
                                          16                                          


Page:  Previous  8  9  10  11  12  13  14  15  16  17  18  19  20  21  22  Next 

Last modified: November 3, 2007