Appeal No. 2006-2280 Page 7 Application No. 10/244,011 claim. Answer, p. 7 (citing In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963)). The appellant argues that Shrader is non-analogous art, and that Shrader does not anticipate because it fails to solve the problem solved by the structure of the claims. Brief, p. 12 and Reply Brief, p. 2. The appellant further argues that the jacket of Shrader does not anticipate the claimed support, because it is “not adapted for mounting on a crutch or a cane” as claimed. Brief, p. 12. It is well settled that the question of whether a reference is analogous art is irrelevant to whether that reference anticipates. See State Contracting & Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) and In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997) (holding that "[a] reference may be from an entirely different field of endeavor than that of the claimed invention or may be directed to an entirely different problem from the one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently discloses every limitation recited in the claims.") Further, the recitation of a new intended use for an old product does not make a claim to that old product patentable. Id. at 1477, 44 USPQ2d at 1432. As such, we reject the appellant’s arguments that Shrader is not anticipatory because it is directed to non-analogous art and is directed to a different problem than the claimed invention. The question before us, raised by the appellant’s other argument, is whether Shrader explicitly or inherently discloses every limitation recited in the claims. The appellant argues that Shrader does not disclose the limitation of a support adapted for mounting on a crutch or a cane. This limitation is found only in the preamble of claim 1. We must determine whether this language of the preamblePage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007