Appeal No. 97-0152
Application 08/157,709
claimed subject matter over the prior art (see page 5 in the
answer). This position, however, runs counter to the well
established principle that there is nothing intrinsically wrong
with defining something in a claim by what it does rather than by
what it is. See In re Hallman, 655 F.2d 212, 215, 210 USPQ 609,
611 (CCPA 1981); In re Swinehart, 439 F.2d 210, 213, 169 USPQ
226, 228 (CCPA 1971). The examiner alternatively urges that
given the appellant’s disclosure that the sheet defined in the
claims may be made of a vinyl resin (specification, page 7), the
polyvinylchloride embodiment of Meyer’s blank 16 (see Meyer at
column 5, line 66 through column 6, line 11) would meet the sheet
deformation and memory characteristics set forth in the claims
(see pages 7 and 8 in the answer). This argument, however, is
inconsistent with Meyer’s disclosure that the blank 16 is a semi-
rigid and resilient element. It simply does not follow from the
fact that the appellant’s sheet and Meyer’s blank may be made
from the same basic resin that these elements will have the same
deformation and memory characteristics.
Thus, the combined teachings of Meyer, Andresen, Sarkozi and
Shaffer do not disclose and would not have suggested a shoe
insert having a sheet of the sort recited in independent claims 1
and 17. Hence, these references fail to establish a prima facie
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