Ex parte KRONENTHAL et al. - Page 6

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

                instead is merely relying upon Schoenholz’s description of the                                                                
                Graham patent in column 1, lines 23-35, of the Schoenholz                                                                     
                specification.   Admittedly, Schoenholz states in column 1, lines2                                                                                                     
                33-35, that Graham’s string for the tampon absorbent discs simply                                                             
                functions to align the individual components so that a                                                                        
                “lengthwise movement would be optimized.”  However, it does not                                                               
                necessarily follow from this description that Graham’s discs are                                                              
                necessarily slidably mounted on the string as urged by the                                                                    
                examiner on page 5 of the answer.                                                                                             
                         Instead, the lengthwise movement mentioned in lines 33-35 of                                                         
                column 1 of the Schoenholz specification refers to lengthwise                                                                 
                expansion of the tampon discs as described in the preceding                                                                   
                sentence of the specification.  As evidenced from the description                                                             
                of the Schoenholz invention itself, it is not necessary to                                                                    
                slidably mount the tampon discs on the string or thread in order                                                              
                to facilitate such an expansion of the discs upon absorbing body                                                              
                         With particular regard to claim 26, the recitation of a                                                              
                surgical nasal pack does not appear in just the preamble itself                                                               
                as the examiner seems to suggest in the paragraph bridging pages                                                              

                         2   We hasten to add that reliance on the Graham patent itself, rather                                               
                than Schoenholz’s description of the Graham patent, would clearly be improper                                                 
                in the present case because the Graham patent was not included in the                                                         
                statement of the rejection.  See In re Hoch, 428 F.2d 1341, 1342, 166 USPQ                                                    
                406, 407 (CCPA 1970).                                                                                                         

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

Last modified: November 3, 2007