Appeal No. 2006-1603
Application No. 10/646,675
Johnson, which is for use in an endodonic filler application, i.e. a root
canal procedure. The appellant further argues that this distinction is
supported by the claim limitation that the obturator has a distal end with a
tip that is used either to cut or separate tissue. The examiner argues
(Answer p. 11) that this phrase is of no patentable moment because in
order to further limit the claim there must be some distinction based upon
the intended use recited. The examiner further argues that, in apparatus,
article, and composition claims, intended use 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.
2. The appellant argues (Brief p. 10) that the limitation of the shaft being
formed as a monolithic structure is a structural limitation. The examiner
argues (Answer p. 9) that the limitation is a product by process limitation
because the claim phrase “being formed as” is a manner in which a series
of operations, actions, functions or steps proceeds.
With regard to the first claim construction issue, use for endoscopic surgery, we
first note that functional limitations in an apparatus claim are met by prior art if the
structure shown in the art inherently has the capacity to perform that function. In re
Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed Cir 1997). Endoscopic surgery itself
requires cutting or separation of tissue to make the portion of the anatomy to be
subjected to endoscopic surgery accessible. The specification at p. 2, Vidal at col. 1,
lines 32-35 and Metcalf col. 1, lines 30-33 all teach that an obturator, as used in
endoscopic surgery, is, and therefore must be capable of being, placed in a bore
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