Ex Parte Zatloukal et al - Page 6

              Appeal 2007-0483                                                                     
              Application 10/087,032                                                               

              the Reshefsky device.  Since the plugs described by Reshefsky are coupled            
              as in the claim, facilitate removable attachment to audio devices, and are           
              capable of transferring audio signals in the specified directions whether the        
              signals are considered “telephony” or “non-telephony” audio signals, the             
              claimed headset lacks novelty, even though the (unclaimed) wireless mobile           
              phone may not.  In other words, the artisan would recognize that the plugs as        
              described by the reference meet the intended use of “to facilitate” all that is      
              recited in parts (a) and (b) of claim 12.                                            
                    That Reshefsky does not disclose the structure as being suitable for           
              use with other types of wireless phones or audio devices is essentially              
              irrelevant with respect to novelty.  See In re Schreiber, 128 F.3d 1473, 1477,       
              44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (“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”); In re Hack, 245 F.2d 246, 248, 114 USPQ               
              161, 162 (CCPA 1957) (“[T]he grant of a patent on a composition or                   
              machine cannot be predicated on a new use of that machine or                         
              composition”).                                                                       
                    As we have noted, Appellants’ arguments in the briefs do not                   
              persuade us of error in the Examiner’s rejection of claim 12 for obviousness         
              over the teachings of Reshefsky and Douglas.  We sustain the § 103                   
              rejection of claim 12, even though we also find that Reshefsky considered            
              alone fully meets the requirements of claim 12.  A finding of anticipation           
              means that the claim is also obvious under 35 U.S.C. § 103.  Anticipation is         
              “the epitome” of obviousness.  See, e.g., Connell v. Sears, Roebuck & Co.,           
              722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983); In re Fracalossi,           


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