Appeal 2005-2349
Application 09/961,126
10. As found by the Examiner, the roll coater applies the resin only to the
crests of the corrugated web as claimed.
As a second matter, Appellant is incorrect that the question of whether
the supply device is “capable of” applying water is irrelevant to patent-
ability. In fact, the Examiner's analysis is consistent with the law on
anticipation. Claim 10 is directed to an apparatus. "[A]pparatus claims
cover what a device is, not what a device does." Hewlett-Packard Co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1468, 15 USPQ2d 1525, 1528 (Fed.
Cir. 1990). Therefore, the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, or the function
or result of that structure. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); In re Gardiner, 171 F.2d 313, 315-16,
80 USPQ 99, 101 (CCPA 1948). If the prior art structure possesses all the
claimed characteristics including the capability of performing the claimed
function, then there is a prima facie case of unpatentability. In re Ludtke,
441 F.2d 660, 663-64, 169 USPQ 563, 566-67 (CCPA 1971).
The Examiner has provided a reasonable basis to conclude that the
roll coater 82 of Wallick is capable of applying water to only a plurality of
crests of the web (Answer 5-6 and 13-14). For instance, the Examiner notes
that the devices of the Wallick references have the same structure and
function as Appellant’s supply device (Answer 13). Compare, for instance,
the roll coater shown in Figure 2b of Wallick ‘391 with Appellant’s water
supply device shown in, for instance, in Figure 1 at 114 and in Figure 2 at
-8-
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