Appeal 2006-3236
Inter Partes Reexamination Control No. 95/000,006
The preambles of claims 1 and 16 recite a "tray for storing a
semiconductor integrated circuit device" and the bodies of the claims recite
how the device is intended to fit into the tray. The "semiconductor
integrated circuit device" is not part of the claimed tray, but is an "intended
use" for the tray. That is, the claims are directed to a tray, not the tray in
combination with the semiconductor device.
The "intended use" of a machine is not germane to the issue of
patentability of the machine itself. In re Casey, 370 F.2d 576, 580,
152 USPQ 235, 238 (CCPA 1967). A statement of intended use does not
qualify or distinguish the structural apparatus claimed over the reference.
In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). There is
an extensive body of precedent on the question of whether a statement in a
claim of purpose or intended use constitutes a limitation for purposes of
patentability. See generally Kropa v. Robie, 187 F.2d 150, 155-59,
88 USPQ 478, 483-87 (CCPA 1951) and the authority cited therein, and
cases compiled in 2 Chisum, Patents § 8.06[1][d] (2006). Such statements
often, although not necessarily, appear in the claims preamble. In re Stencel,
828 F.2d 751, 754, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987). However, the
structure must be capable of performing the intended use.
The issue is whether Brahmbhatt's structure in Figure 17 is capable of
performing the "intended use" of storing a semiconductor integrated circuit
device as claimed.
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