Thibault case discussed by Board in GM appeal
Final rejection of claims 5, 13, 16 and 18 is affirmed. Final rejection of the
other pending claims is reversed.
The examiner contends that the contested language is not entitled to weight
because it is directed to the manner of operating the fuel cell system rather than imposing an actual limitation on the claimed apparatus,29 citing Ex parte Thibault.30 In Thibault, the board explained that31 If the apparatus as claimed is not fully described in [the prior art], it differs so little therefrom as to be obvious to the designer of apparatus. The purpose to which the apparatus is to be put and the numerous expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.
Thibault does not reproduce the apparatus claim in question, but expressly finds that it is very closely the same as the prior art. Thibault, thus, does not create a per se rule that contents and mode of operation never count, but rather simply holds that when disclosed structures are essentially the same and the contents and use would have been obvious from the prior-art structure, the lack of an express teaching of content and use will not prevent anticipation. In short, Thibault's holding cannot be abstracted from its context. Today, we might say that the prior- art apparatus was capable of containing and operating as claimed.
[Thibault, 164 USPQ 666 (Bd. App. 1969). ]