Appeal No. 2006-0626 7
Application No. 09/316,990
that claim 1 is directed to an article, not a method of using the article. The preamble
merely sets forth the intended use of the article. It is well settled that the manner or
method in which a device is to be utilized is not germane to the issue of patentability of
the machine itself. In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967).
Moreover, the appellants have failed to cogently explain, and it is not apparent, why the
Giuliani device as modified in the manner proposed by the examiner would not be
capable of use in the treatment of xerostomia.
Claim 1 also sets forth the functional limitation requiring “that when the
stimulator member is brought into contact with the salivary member, a sufficient
vibrational effect is produced on the salivary member that a significant increase in the
saliva production into the oral cavity results.”3 As modified in the manner advanced by
the examiner, the Giuliani device would have a brush or bristle arrangement responsive to
all of the structural stimulator assembly limitations recited in claim 1. Here again, the
appellants have not cogently explained, and it is not evident, why such a brush or bristle
arrangement, when vibrated by Giuliani’s driver, would not be capable of performing the
aforementioned function.
Finally, it is true that none of the applied references address the problem of
xerostomia. Still, as long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor. In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). As explained above, the collective
3 Read in light of the underlying specification (see page 9), the recitation of a significant increase in saliva
production would be understood as requiring an increase of at least 0.1 milliliter.
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