Appeal No. 96-3465
Application No. 07/848,856
the needle-like members to anchor the material to the mandrel
until the edges of the bag material are adjacent to each other;
(3) securing the bag material at its edges onto the mandrel by
clamping members; (4) retracting the needle-like members from the
bag material; and (5) securing the edges of the bag material
together.
According to the examiner (Answer, p. 4):
[P]roviding needlelike members on said mandrel is a
mere obvious matter of apparatus design choices and do
[sic, does] not patentably distinguish the claimed
process steps. Such design, it is submitted, was
provided by applicant to anchor the fusible material on
said mandrel. Likewise the aspect of drawing the
needle like member serves only to release the fusible
material. Colombo et al teaches the claimed steps of
holding the material onto the mandrel and later
releasing said material off the mandrel.
Appellants point out (Brief, pp. 5-6):
In Claim 1, the method includes the step of
“initially piercing at least one edge of said bag
material with said needlelike members to anchor the
material to the mandrel until said edges are adjacent
to each other.” . . . The novelty of this method does
not solely rest in the design limitations of the
apparatus. Providing a mandrel with needlelike members
merely sets the stage for the process step of piercing
the bag material found in Step c). . . .
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