Appeal 2006-1326
Application 09/919,326
With respect to the device claims, we add that these claims are
directed solely to the device, not the combination of the device with a cavity.
Therefore, properly viewing Appellants’ device in isolation from the cavity,
Hayashi’s rubber plug 3 satisfies the claimed structural features of
Appellants’ device. In another words, Hayashi’s rubber plug 3 meets
Appellants’ device claims by virtue of satisfying the functional claim
language (i.e., forming a seal with the interior wall of the cavity) when the
rubber plug 3 is inserted into an appropriate cavity. Appellants’ device
claims encompass a rubber plug capable of being inserted into any size or
shape cavity.
Appellants’ preambular claim recitation of “device for sealing a
cavity” provides additional support for the proposition that the claim term
“cavity” is not part of the claimed device. As the Examiner correctly stated,
the claim recitation, “for sealing a cavity,” is merely an intended use of the
device which does not further limit an apparatus (i.e., device) claim
(Answer 5). Based on his determination that the claim recitation “for sealing
a cavity” is merely an intended use, the Examiner appropriately indicated
that Appellants’ device claims, as currently written, do not “positively claim
the internal cavity” (Answer 5) such that a particular cavity size does not
impose any structural limitation on the device as claimed.
Because Hayashi discloses a rubber plug 3 and method of using the
rubber plug 3 that satisfy all the features of claims 5 and 9, Hayashi
anticipates Appellants’ claims.
Accordingly, we affirm the Examiner’s rejection of claims 5, 7-11 and
13-16 under § 102(b) over Hayashi.
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