Appeal No. 97-0774
Application 08/121,525
omission of the securing elements still allows the
device to function and it is well settled, that the
omission of an element and its function in a
combination is an obvious expedient if the remaining
elements perform the same function as before. In re
Karlson, 135 [sic, 136] USPQ 184 (CCPA 1963). [Answer,
pages 3-4].
As an apparent alternative position, the examiner states:
Furthermore, Schoenholz discloses that it was
known to attach absorbent disc [sic, discs] or blocks
along a string such that the string “simply functioned
to align the individual components so that this
lengthwise-movement would be optimized.” (1:23-35,
description of Graham U.S. [Patent] 2,858,831).
[Answer, page 4.]
With regard to the examiner’s first position quoted supra,
we agree that, as a general rule, the elimination of an element
and its function would have been an obvious expedient. See, for
example, In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA
1975). That legal principle, however, is not applicable here in
the manner proposed by the examiner.
In the present case, no evidence has been proffered by the
examiner to show that the “attachment” for each of Schoenholz’s
sponges is an element which is separate from the sponge members
and the thread to make possible the elimination of the attach-
ments as proposed by the examiner without eliminating a portion
of the sponge members and/or the thread needed for fixing the
sponge members to the thread. In fact, the Schoenholz specifi-
cation states in column 2, lines 33-37, that the thread itself is
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