Appeal No. 2006-1347 Page 5
Application No. 10/651,205
product patentable.” In re Schreiber, 128 F.2d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997) (holding Schreiber’s claimed dispensing top for popcorn
designed to allow several kernels of popped popcorn to pass through at the same
time to be anticipated by a prior art patent disclosing a spout used for dispensing
oil from oil cans); see also In re Swinehart, 439 F.2d 210, 213-14, 169 USPQ 226,
229 (CCPA 1971) (“[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things in the prior art,
does not cause a claim drawn to those things to distinguish over the prior art.”).
The appellants’ contention that their brace assembly is used to provide a
compression fit does not have patentable weight if the structure is already known.
See Schreiber, 128 F.2d at 1477, 44 USPQ2d at 1431.
We find that the Rinderer brace inherently provides a compression fit
between the studs. The structure of the Rinderer brace assembly is identical to the
claimed brace assembly. The mounting surface extends from the base at an angle
greater than 90 degrees such that the distance between the studs dictates the
strength of the compression fit provided by the brace assembly. As such, all of the
elements of claim 1 are found in Rinderer, either expressly or under the principle
of inherency, and the claim is thus clearly anticipated. Accordingly, we sustain the
rejection of claim 1.
Dependent claim 3 further recites that the first mounting surface has a first
fastener hole. The appellants contend, without providing specific arguments in
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