Appeal No. 2005-2418
Application 09/932,639
function does not defeat the Board’s finding of anticipation. 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
(case citations omitted).” In re Schrieber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The court concludes at
128 F.2d 1477, 44 USPQ2d 1431-32, that “Schrieber’s contention
that his structure will be used to dispense popcorn does not have
patentable weight if the structure is already known, regardless
of whether it has ever been used in any way in connection with
popcorn (emphasis added).” Such reasoning obviously applies to
rejections under 35 U.S.C. § 103. Schrieber confirms the
guidance provided in Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat.
App. & Int. 1987), that a recitation with respect to the manner
in which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus for a prior art apparatus
satisfying the claimed structural limitations. Note also Ex
parte Wikdahl, 10 USPQ2d 1546, 1548 (Bd. Pat. App. & Int. 1989)
and In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967).
Even though we recognize that Endo does not
specifically teach an application to wells or well tools, it is
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