Appeal No. 96-4085
Application 08/341,837
a means for supplying deficiencies in the applied references,
given that appellants have in their specification indicated that
the particular sizing relationships solve certain problems and
provide key features to the invention therein. Like appellants,
we find that the examiner's combination of Johnson and Ciolino
is based on hindsight reasoning derived only from appellants'
disclosure and not on the fair teachings of the prior art
references themselves.
Based on the foregoing, we will not sustain the
examiner's rejection of claims 2, 4, 8 through 12, 21 through 23
and 28 under 35 U.S.C. § 103 based on Johnson and Ciolino.2
2On page 7 of the answer, the examiner has expressed the
view that
since individuals come in different sizes, terms
relating to the size of a user are not particularly
specific. Thus, a float “sized and adapted” to fit one
individual in a particular manner will not fit a second
individual in the same manner, if the second individual
is shaped and sized differently. It is conceivable
that the arrangement shown by Johnson et al, for
example, could fit some individuals in the manner
recited in the claim.
To the extent that this reasoning appears to raise an issue under
35 U.S.C. § 112, second paragraph, we note that no such rejection
is before us for review in this appeal. If the examiner
considers that such a rejection might be appropriate, then the
examiner should positively so indicate on the record.
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