Appeal 2007-0932
Application 10/058,924
rather than function. The Examiner relied upon In re Schreiber, 128 F.3d
1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). We agree with
the Examiner’s reliance upon this precedent as indicating that it is well
settled that the recitation of a new and intended use for an old product does
not make a claim to that old product patentable. The Examiner, of course, is
referring to the potential future use of the confirmation process of the
identity of a subject person to be photographed by the photographer, a
feature which was known in the art anyway according to Appellants’
admissions thereof as noted earlier in this opinion.
Turning to the first stated rejection, Appellants present arguments
only as to independent claim 1 among the claims rejected here. These
arguments are presented in the principal Brief on appeal between pages 20
and 26, and between pages 18 and 20 in the Reply Brief in a repetitive
manner.
The Examiner’s rationale at page 5 of the Answer indicates that
McDonald does not explicitly disclose the feature of displaying the subject
information on a display device of the digital camera, a feature the Examiner
subsequently relies upon Wang to teach. Contrary to the positions set forth
in the Brief and Reply Brief, the emphasis in the statement of the Examiner
is not upon the word “not” but upon the word “explicitly.” As the record
reveals, the digital camera of McDonald is the ultrasound image capture
station 22 in figure 1. The demographic data module within each capture
station 22 and review stations 26 in figure 1 retrieve their pre-entered data
from the database server 24. The description of the nature of the entry of
information in this module is discussed at columns 4 and 5 of McDonald to
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013