Appeal No. 2006-1347 Page 4
Application No. 10/651,205
when the brace assembly is installed, a compression fit is not created during
installation, and there is no disclosure or suggestion in the Rinderer patent to create
such a compression fit. (Appellants’ Brief, p. 10). The appellants further
characterize the portion of claim 1 directed to creating a compression fit as
“functional language” and contend that the examiner does not appear to have
considered this functional language in his rejection. (Appellants’ Brief, p. 11).
While we agree with the appellants’ characterization of the portion of claim
1 directed to creating a compression fit as “functional language,” we disagree that
this language is a sufficient basis for patentability. To anticipate a claim, a prior
art reference must disclose every limitation of the claimed invention, either
explicitly or inherently. See Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34
USPQ2d 1565, 1567 (Fed. Cir. 1997). There is no dispute that the structural
limitations recited in claim 1 are all found in the Rinderer reference. Specifically,
Rinderer discloses a brace assembly to support an outlet box having “a brace
member adapted to be installed between first and second support members, said
brace member having a base,” “a first mounting surface extending from said base
at a first end of said brace member,” and “said first mounting surface forming a
first angle greater than 90 degrees with said base.”
Although Rinderer does not describe using its brace assembly to provide a
compression fit between the studs, the absence of a disclosure relating to function
does not defeat the examiner’s anticipation rejection. “It is well settled that the
recitation of a new intended use for an old product does not make a claim to that
old
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007