2115

MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS

Casey
 
Our reviewing court’s predecessor stated that “[t]he manner or method in which [a] machine is to be utilized is not germane to the issue of patentability of the machine itself.” In re Casey, 370 F.2d 576, 580 (CCPA 1967).
 
OTTO

Language in an apparatus or product claim directed to the function, operation, intent-of-use, and materials upon which the components of the structure work that does not structurally limit the components or patentably differentiate the claimed apparatus or product from an otherwise identical prior art structure will not support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).

Furthermore, "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963).

Thibault

The material worked upon by an apparatus does not limit an apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) (“[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.”).

YOUNG

In re Young, 75 F.2d 996 (CCPA 1935) (where a claim to a machine for making concrete beams was not patentable over the prior art, recitation in the body of the claim of the material worked upon, a concrete beam, did not lend patentability to that claim).

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