Appeal No. 2005-1315 Παγε 3
Application No. 09/972,533
structural modification, of causing scleral expansion and the appellant has not provided
any cogent reasoning why this is not the case. In particular, while the appellant argues
in the request that the Fisher and Smith implants will not displace scleral tissue and
cause scleral expansion if implanted into a pocket which is of a size corresponding to
the implant, the appellant has not explained why the Fisher or Smith implant would not
displace scleral tissue and cause scleral expansion if implanted into a pocket or slit
which is smaller than the implant. In this case, the appellant’s argument as to the
differences between the appellant’s claims and the implants of Fisher and Smith
appears to be directed not to the structure of the implants themselves but rather to the
method in which they are used (e.g., the size of the slit or pocket into which they are
implanted). 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). Accordingly, the appellant’s request
fails to persuade us that either the Fisher or Smith implant falls short of meeting the
language in the appellant’s claims.
In light of the above, the appellant’s request for rehearing is granted to the extent
of our reconsidering our earlier decision but is denied with respect to making any
modification thereto.
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