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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