Appeal No. 95-1112
Application 07/969,121
perforations/in , and claim 18 requires segments of the laminate not be perforated. Parker discloses2
perforations 1-2 mm in diameter with 16 perforations/in (see the table in col. 3), thus leaving segments of2
the laminated product which are generally not perforated. Moreover, although appellant
recites approximately 27 perforations per square inch in claim 6, appellant has not disclosed that the
number of perforations per square inch is critical. We find that one having ordinary skill in the art would
have been able to discover an optimum or workable number of perforations per square inch through routine
experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Because our
affirmance of the rejection of claims 1-4, 14-17, 19 and 20 under 35 U.S.C. § 103 over Parry, Briggs and
Parker is based on a different rationale than advanced by the examiner, and because we find that Parker
suggests the limitations recited in claims 5, 6 and 18 on appeal for reasons not advanced by the examiner,
under the provisions of 37 CFR § 1.196(b) we enter a new ground of rejection of claims 5, 6 and 18 under
35 U.S.C. § 103 over the combined teachings of Parry, Briggs and Parker.
For the foregoing reasons, the examiner’s rejections of claims 1-6 and 14-20 for obviousness are
affirmed and claims 1-6 and 14-20 are subject to a new ground of rejection pursuant to 37 CFR §
1.196(b) under 35 U.S.C. § 103 over the combined teachings of Parry, Briggs and Parker.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53, 131, 53, 197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new
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