Ex parte EDWARDS et al. - Page 13




          Appeal No. 98-1922                                        Page 13           
          Application No. 08/253,721                                                  


               Claim 9 reads as follows:                                              
                    The slide according to Claim 16 in which the                      
               thickness of the compressible material is a minimum of ½               
               inch thick.                                                            





               The examiner determined (answer, p. 5) that it would have              
          been obvious to make Maeda's synthetic rubber top-surface                   
          component 5 of a closed foam construction, which is an                      
          extremely common inexpensive compressible material, and                     
          relatively hard, in order to avoid abrasion during use.  The                
          examiner also determined (answer, pp. 4 and 5) that, the                    
          hardness as well as the thickness of Maeda's synthetic rubber               
          top-surface component 5 were obvious matters of design choice.              


               The appellants argue (brief, pp. 8-9) that Maeda does not              
          teach or suggest the claimed limitations and that the examiner              
          has not provided any support as to why the claimed limitations              
          would have been obvious matters of design choice.                           











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