Ex Parte Torres et al - Page 8

                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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