Appeal 2007-3494
Application 10/348,719
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). We agree that the Examiner has provided
sufficient evidence to support a prima facie case of anticipation, as the prior
art describes each claimed element.
Appellant contends that "[n]owhere does Diesso disclose that
diagnostic information is obtained from the deformation of the form." (Br.
8.) Appellant further argues that Diesso does not disclose that a size of an
orthodontic appliance is based on the diagnostic information from the form.
(Id.)
The Examiner, however, considers the claim clause, "wherein
diagnostic information is obtained from the deformation of the form wherein
a size of an orthodontic appliance is based on the diagnostic
information from the form" to be a recitation of the intended use of the
claimed wafer. (Answer 5.) We agree with the Examiner that a recitation of
the intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. If the prior
art structure is capable of performing the intended use, then it meets the
claim. See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967) and In re Otto, 315 F.2d 937, 940,136 USPQ 458, 459 (CCPA 1963).
In the present case the prior art impression is capable of being used for
diagnosis of dental conditions and sizing of an orthodontic appliance.
Furthermore, Diesso actually discloses that its model or impression
material can be used for the purpose of appliance or dental prosthetic device
fabrication. (Diesso, col. 4, ll. 62-65.) Diesso further indicates that dental
impression techniques are used to make master models from which
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013