Ex parte KRONENTHAL et al. - Page 5

          Appeal No. 97-0774                                                          
          Application 08/121,525                                                      

          attached to the disc sponges 1 at the X-shaped apertures of the             
          sponges.  It therefore appears that the attachments are parts of            
          the thread and parts of the sponge members as confirmed by the              
          examiner’s finding that Schoenholz’s sponge members 1 “are                  
          fixedly attached to the thread . . .” (answer, page 5).                     
               Thus, what the examiner proposes in substance is not the               
          elimination of an element, such as each sponge member or the                
          thread itself, but rather only a portion of each sponge member              
          and, presumably, any attaching portion of the thread.  Neither              
          Karlson nor Kuhle, however, supports the notion of eliminating              
          just a selected portion of an element based on the improper                 
          hindsighted benefit of appellants’ own disclosure.  Furthermore,            
          if the attaching portions were somehow eliminated, Schoenholz’s             
          thread would no longer perform its function of fixedly mounting             
          the sponge members as required by Karlson.  Moreover, the                   
          elimination of the attachment of Schoenholz’s sponge members to             
          the thread 2 is directly contrary to Schoenholz’s invention.  As            
          a result, it is not seen how one of ordinary skill in the art               
          would have been motivated to do so without the hindsighted                  
          benefit of appellants’ disclosure in view of the fact that such a           
          modification would have led away from Schoenholz’s teachings.               
               As we understand the examiner’s alternative position as                
          quoted supra, he is not relying on the Graham patent itself, but            


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