Appeal No. 2006-0554
Application 10/065,541
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The court concludes at
128 F.3d 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).
In view of the foregoing remarks, we turn first to the
rejection of independent claim 23, where its dependent claim 25
is not specifically argued. Appellants’ remarks at pages 3 and 4
of the Brief initially admit that Nishikawa teaches reducing
cogging torque during electrical power operation to the extent
this feature is recited in claim 23 on appeal. On the other
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