Appeal No. 2006-0406
Application 09/497,865
originated. The transmit beam can then be steered by a phase
conjunction mechanism." What is important is that the transmit
beam is directed to the direction from which the input signal is
coming, not that only a single element is used. Retrodirective
antennas such as Aoki use all of the elements for transmit and it
is not clear whether appellants are using the same arrangement.
We assume this matter can be clarified without adding new matter.
More importantly, however, we interpret the phrase "so that
the corresponding element can be used for transmission" to be a
statement of intended use which is not entitled to patentable
weight since it says that the corresponding element "can be used
for transmission" (emphasis added) and no actual transmission is
required. The manner or method in which a machine is to be
utilized is not germane to the issue of patentability of the
machine itself. See In re Casey, 370 F.2d 576, 580,
152 USPQ 235, 238 (CCPA 1967). The same comment applies to
claims 7, 21, and 37. The phrase "to provide for
retrodirectivity" in claim 8 is also considered a statement of
intended use. As long as a strongest signal is determined and
the corresponding element "can be used" for transmission (as well
as other elements) or to provide for retrodirectivity, the
limitation is satisfied. Since Chiba discloses locking on the
strongest signal, and the corresponding element is capable of
being used for transmission, Aoki is not required for claims 1,
- 13 -
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007