Appeal 2007-2643
Application 10/165,805
of said first portion toward said second portion. Further, claim 1 requires the
information transmission structures to be associated with the load cell to
transmit information about a measured force of the first portion toward the
second portion away from the load cell.
As the Examiner explains, it is well settled that the recitation of a new
intended use for an old device does not make a claim to that old device
patentable. 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
over the prior art apparatus); In re Hack, 245 F.2d 246, 248, 114 USPQ 161,
162 (CCPA 1957) (“the grant of a patent on a composition or a machine
cannot be predicated on a new use of that machine or composition”).
Accordingly, we find that the recitation of the intended use of the device, for
use in spine surgery, is not a positive limitation on the claimed invention.
Nevertheless, Yen teaches a load sensor for a bone graft (Yen, col. 1,
ll. 6-7). Yen’s device can be used to measure, inter alia, the load on two
segments of a patient’s spine (Yen, col. 2, ll. 55-56). Appellant does not
dispute that Yen’s device comprises: (1) a first portion; (2) a second portion;
(3) a load cell; and (4) information transmission structures (Yen, col. 1, l. 64
- col. 2, l. 3). Appellant does not dispute that the first portion of Yen’s
device is fittable with respect to a second portion (Yen, col. 2, ll. 4-9).
Further, Appellant does not dispute that the first and second portions of
Yen’s device have opposing load distribution surfaces shaped for
substantially even contact of adjacent vertebrae above and below an
intervertebral space. Appellant does not dispute that the load cell of Yen’s
device is mounted in a manner to receive a force of the first portion toward
said second portion, or that the information transmission structures of Yen’s
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