Appeal No. 2005-1273 Page 6
Application No. 10/057,619
On page 13 of the answer, the examiner asserts that claims 1, 19 and 44 are
each directed to an apparatus and the differences that the appellant is relying on to
establish patentability lie in the intended use statements of the apparatus. The
examiner then states that:
While the functional Iimitation[s] were considered during examination numerous
case Iaw citations as noted in MPEP 2114 refer to the necessity of apparatus
claims being structurally rather than functionally distinguished from the prior art
(i.e. citing a new use of a prior art apparatus does not result in patentability of an
apparatus claim).
In our view, this position of the examiner is contrary to the position taken by the
examiner in the rejections before us in this appeal. In any event, the functional
limitations recited in claims 1, 19 and 44 do not merely state a purpose or intended use
for the claimed structure but rather give "life and meaning" and provide further positive
limitations to the invention claimed.
For the reasons set forth above, the decision of the examiner to reject claims 1,
19, 30 and 44, and claims 2 to 18, 21 to 29 and 31 to 44 dependent thereon, under
35 U.S.C. § 103 is reversed.2
2We have also reviewed the patents to Logan, Asakawa and Chapin additionally
applied in the rejection of claims 7, 15 to 17, 29 and 34 but find nothing therein that
would have made it obvious at the time the invention was made to a person having
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