Appeal No. 2006-1844 5
Application No. 10/080,292
dilator perforations 70 align with the perforations 36 on
the catheter when both are in place so that radiopaque
fluid may be injected as the catheter and dilator are
placed in the patient. It is not clear whether the ports 36
and 72 are in more than one side of the periphery of the
dilator and catheter.
With respect to independent claim 1, we have carefully
considered the examiner’s argument that the expression
“being structured and arranged for substantially uniform
discharge of therapeutic fluids therethrough” is [merely]
an intended use. The examiner cites In re Casey, 370 F.2d
576, 152 USPQ 235 (CCPA 1967). Casey is generally cited for
the proposition that the manner or method in which an
article is used is not germane to the patentability of the
article itself. In this case however, it is not the use of
the article that is called into play by the above-quoted
expression. The phrase plainly refers to the structure and
arrangement of the perforations and thus has structural
significance.
Secondly, even if this expression could be held to be
directed to a manner of use, the examiner, by her own
admission, would bear the burden of showing “that the
structure[s] provided by the reference[s] possessed the
capabilities requisite to meet the terms of the claims.”
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