Ex parte KRONENTHAL et al. - Page 4

          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           


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007