How does In re Casey relate to material worked upon in patent claims?
In re Casey is another significant case discussed in MPEP 2115 that relates to material worked upon in patent claims. The MPEP summarizes the case as follows:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited “[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.”
The court upheld an obviousness rejection, stating that “the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.” This case reinforces the principle that the material worked upon (in this case, adhesive tape) does not necessarily impart patentability to an apparatus claim if it doesn’t result in a structural difference.
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