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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