Appeal No. 97-2597
Application 08/176,056
positioned between the adhesive film layer and the first
lamina layer of the elastomeric laminate. In both Boland and
Proxmire, the absorbent core 32 is located inboard of the
elastomeric laminate 12 on the bodyside surface of the
laminate. Accordingly, there is no factual basis in the
evidence relied upon by the examiner in rejecting claim 29 to
support the examiner’s position that the claimed subject
matter as a whole would have been obvious. The mere fact that
the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification (see In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Here, no
such suggestion is found in the applied prior art.
Regarding the positions taken by the examiner in
rejecting claim 29, the examiner’s reliance on appellants’
disclosure of alternative constructions, namely, those of
Figures 3 and 4, in support of the rejection is inappropriate.
See In re Ruff, 256 F.2d 590, 598, 118 USPQ 340, 347 (CCPA
1958) (it is improper to rely on an equivalence known only to
appellants to establish obviousness because it assumes that
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