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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