Appeal No. 2006-1576 5
Application No. 10/223,170
sealing element (61) mounted to the mandrel and made of a first
material; and a second material (60) on said sealing element, where
the second material is an elastomeric material that is softer and
has a modulus of elasticity that is less than that of the first
material. Thus, Urbanosky appears to have a packer-type sealing
apparatus having the same or similar elements as set forth in claim
1 on appeal and arranged in the same manner required in claim 1.
As generally set out in In re Schreiber, 128 F.3d 1473, 44
USPQ2d 1429 (Fed Cir 1997), during examination, statements in a
claim reciting the purpose or intended use of the claimed invention
must be evaluated to determine whether such recited purpose or
intended use results in a structural difference between the claimed
invention and the prior art applied by the examiner. While features
of an apparatus may be recited either structurally or functionally,
claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function, because
apparatus claims cover what a device is, not what a device does
(Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15
USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if the prior art sealing
apparatus in Urbanosky is capable of performing the function or
intended use as recited in claim 1, then it meets the claim.
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