Appeal No. 2005-1315 Παγε 8
Application No. 09/972,533
(CCPA 1971) and Ex parte Cordova, 10 USPQ2d 1949, 1950-51 (Bd. Pat. App. & Int.
1987).
The appellant argues, on pages 8-10 of the brief, that, in essence, the Fisher and
Smith implants are intended to conduct fluid to or from the anterior chamber of the eye
in order to regulate intraocular pressure and not to apply force against the scleral pocket
to expand the sclera, as recited in claim 1, and further do not possess a shape
prescribed to expand the sclera, as recited in claim 45. It is well settled that the
recitation of an 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). As explained above, the Fisher and Smith implants both appear
reasonably capable of functioning in the manner called for in claims 1 and 45 and the
appellant has not provided any cogent reasoning why this is not the case.
For the foregoing reasons, we shall sustain the rejections of independent claims
1 and 45 as being anticipated by Fisher and by Smith. The appellant has elected not to
separately argue dependent claims 36-41 apart from claim 1 or claims 46-51 apart from
claim 45, thus allowing them to stand or fall with claims 1 and 45 (see In re Young, 927
F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978)). Accordingly, the rejections of these claims as
being anticipated by Fisher and by Smith are also sustained.
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