Appeal No. 1998-2818
Application 08/550,521
terminate at the edges of the unitarily formed ear portions.
In rejecting claim 1 as being unpatentable over Uni-Charm
or Kao, the examiner considers that the ear portions of the
diapers of Uni-Charm and Kao correspond to the claimed side
panel portions. The examiner concedes on page 3 of the final
rejection that these ear portions are not separately formed
apart from their respective body portions and then affixed
thereto. The examiner takes the position, however, that
appellant does not disclose the criticality of this form of
construction and that, accordingly, it have been would an
obvious matter of design choice to separately form the side
panels of Uni-Charm or Kao since such modification would have
involved a mere change from unitarily formed to separately
formed parts “which is recognized by case law as being
generally within the level of ordinary skill. . . . In the
instant, crowded and commercially viable diaper art such
changes would likewise be recognized as being within the level
of ordinary skill in the art” (answer, page 4).
We will not support this rationale. In rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. In re
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