Appeal 2007-2606
Application 10/903,376
Cir. 1999). Here, we agree with the Examiner that Wiener explicitly
discloses each and every limitation of claim 1 (FF 3-8). Appellant contends,
but does not explain how, the opposing grooves recited in claim 1 differ
structurally from the opposing slots disclosed by Wiener. Indeed, according
to Appellant's specification, the claimed opposing grooves may take a
variety of shapes (FF 2). Instead, the claim language relied upon by
Appellant, i.e., the clear flexible sheet is "flexibly pressed ... into the
opposing grooves to secure the item within the picture frame," apparently
relates to the recited flexible sheet, specifically to its degree of structural
rigidity. Secondly, to the extent the "flexibly pressed" claim language
recites a method step, the recited method is a method of using the claimed
product that does not distinguish the structure of the claimed product from
the prior art, not a method of manufacturing it. 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 Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Sinex, 309 F.2d 488, 492, 135
USPQ 302, 305 (CCPA 1962).
Therefore, based on the foregoing, we will affirm the rejection of
claims 1, 2, 4, and 9 under § 102(b) as anticipated by Wiener.
IV. Obviousness
Claims 1-8 stand rejected under § 103(a) as obvious over Hull in view
of either Wiener or Wenkman. Appellant has not provided separate
patentability arguments for any of claims 2-8 and, therefore, they stand or
fall together with claim 1. 37 CFR § 41.37(c)(1)(v). Hence, we decide the
issue of obviousness on the basis of claim 1.
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