Appeal No. 2006-1371
Application No. 10/323,250
the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1783-84.
Thus, even if the examiner is correct that the appellants
have not stated that the substantially equal heights of the
enclosure and product packs has a purpose or solves a problem,
and even if the appellants’ and Carnes’ packages perform
similarly, that does not necessarily mean that the appellants’
product design (or any other design) would have been obvious as a
design choice. The examiner is required to establish that the
prior art would have fairly suggested the claimed package-making
method to one of ordinary skill in the art, and the examiner has
not done so.
The examiner argues that “a recitation of the intended use
of the claimed invention must result in a structural difference
between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art.
If the prior art structure is capable of performing the intended
use, then it meets the claim” (answer, pages 5-6). The examiner
also argues that “to be entitled to weight in method claims, the
recited structure limitations therein must affect the method in a
manipulative sense, and not to amount to the mere claiming of a
use of a particular structure” (final rejection mailed June 3,
2004, pages 3-4). The appellants are not claiming a method for
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