Appeal 2006-2343
Application 10/246,620
punching them out are indeed found in the Specification (Specification 4:35
to 5:3).
We agree with the Examiner that claim 1 does not necessarily require
the presence of the contaminants or defects in the end product. This is
because the end product is the roll of punched adhesive tape. In the process
of forming this end product the holes may be positioned to remove the
contaminants or defects so they may not be present in the end product. We
cannot agree with Appellants that this reading of the claim is inconsistent
with the Examiner’s use of Keller to meet the limitations of the claim (Reply
Brief 3). As a matter of claim interpretation there is simply no requirement
that contaminants or defects be present in the claimed end product.
With regard to the argument that the ribbon product of Keller is not
“for semiconductor” use, we agree with the Examiner that the intended use
in this case does not differentiate the claimed roll product from the roll
product of Keller. “It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.” In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
The Examiner has provided a reasonable basis to conclude that the
structure of the claimed product is not patentably indistinguishable from the
structure of the roll of adhesive ribbon described by Keller. See In re
Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976). Appellants
have not sufficiently rebutted the Examiner’s prima facie case.
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