Appeal No. 2006-1748 Παγε 4
Application No. 10/728,375
The examiner considers the language in claim 1 regarding the use of the device
to open a frozen or stiff seal, to be language of intended use which does not accord
patentable weight to the claims.
Appellant argues that Sutton’s device is meant to be placed under the door
handle and then lifted upwardly so as to assist in opening the door handle whereas the
present invention is meant to be placed between the car door and door frame and
levered by the user or pulled.
We do not find this argument persuasive because we agree with the examiner
that this language pertains to the intended use of the device. It is well established that
the manner or method in which a machine is to be utilized is not germane to the issue of
patentability of the machine itself. In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238
(CCPA 1967). A statement of intended use does not qualify or distinguish the structural
apparatus claimed over the reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302,
305 (CCPA 1962). There is an extensive body of precedent on the question of whether
a statement in a claim of purpose or intended use constitutes a limitation for purposes of
patentability. See generally Kropa v. Robie, 187 F.2d 150, 155-59, 88 USPQ 478,
483-87 (CCPA 1951) and the authority cited therein, and cases compiled in 2 Chisum,
Patents § 8.06[1][d] (1991). Such statements often, although not necessarily, appear in
the claim's preamble. In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed.
Cir. 1987).
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