Ex Parte Trigger - Page 9

                Appeal 2007-0003                                                                                 
                Application 10/217,990                                                                           

                person of ordinary skill in the art to combine the elements” in the manner                       
                claimed.  KSR, 127 S.Ct. at 1731, 82 USPQ2d at 1389.                                             
                       Applying the preceding legal principles to the factual findings in the                    
                record of this appeal, we determine that the Examiner has established a                          
                prima facie case of obviousness.  This case of prima facie obviousness has                       
                not been adequately rebutted by Appellant’s arguments.                                           
                       Appellant argues that the structure of Botzem does not contain                            
                grounding members connected to the outer cylinder that extend into a water                       
                table.  (Br. 10).  Appellant also argues that Schulz fails to disclose grounding                 
                members that extend into a water table.  (Br. 11).  Appellant has not disputed                   
                that it would have been obvious to include grounding members in the                              
                apparatus of Botzem as suggested by the Examiner.  Rather, Appellant’s                           
                arguments are directed to the location of the described apparatus.  These                        
                arguments are not persuasive because they do not establish a non-obvious                         
                structural difference from the cited prior art.                                                  
                       Appellant argues that both Botzem and Schulz are silent with respect                      
                to the device as “being operable to permit the transmission of                                   
                electromagnetic energy.”  (Br. 11).  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.  See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,                         
                1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a                              
                previously known composition, even when that property and use are                                
                unobvious from prior art, can not impart patentability to claims to the known                    
                composition."); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA                          
                1962) (statement of intended use in an apparatus claim failed to distinguish                     


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