Appeal No. 2005-1266 7
Application No. 10/227,755
the game. Although Smith does not teach that the first player to
complete a card is declared the winner as recited in claim 1, the
corresponding language in the claim amounts to a functional
limitation which sets forth the manner in which the stewardship
cards are intended to be used. It is well settled that the
recitation of a new intended use for an old product does not make
a claim to that old product patentable. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In other
words, the manner or method in which a device is to be utilized
is not germane to the issue of patentability of the device
itself. In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967). In the present case, the appellant has not cogently
explained, and it is not apparent, why Smith’s “stewardship”
cards are not inherently capable of the use specified in claim 1.
In light of the forgoing, the appellant’s argument that the
subject matter recited in claim 1 distinguishes over that
disclosed by Smith is unconvincing. Therefore, we shall sustain
the standing 35 U.S.C. § 102(b) rejection of claim 1, and claims
2 through 8 which stand or fall therewith, as being anticipated
by Smith.
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