Appeal No. 1998-0546
Application No. 08/560,507
10 to 10 ohm-cms, the carbon is present in the amount of 153 6
to 20% by weight.
Nevertheless, we are reversing the rejection of claim 1
because, as appellants correctly note, the Final Rejection
fails to address the claim's requirement that the "electrical
tap includ[e] a tab integrally formed with said container."
In the Answer (at 6) the examiner argues that
while an 'integral tab' has not been shown
in any of the references, it has not been
associated [with] any criticality by the
applicant and thus it is not believed to be
a patentable feature over the prior art.
See In re Dailey, [357 F.2d 669,] 149 USPQ
47 (CCPA 1976 [sic, 1966]).
The examiner's reliance on Dailey is believed to be misplaced.
In that case, the court refused to give patentable weight to
the claimed "less than hemisphere" configuration of a
disposable nursing container, stating:
Appellants have presented no argument which
convinces us that the particular
configuration of their container is
significant or is anything more than one of
numerous configurations a person of
ordinary skill in the art would find
obvious for the purpose of providing mating
surfaces in the collapsed container of
Matzen.
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