Appeal No. 97-0752
Application 08/354,304
Based on the above, the examiner has made the following
conclusions of obviousness:
[I]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to
use silicone rubber in crumb form . . . since it has
been held to be within the general skill of a worker in
the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious
design choice. In re Leshin, 125 USPQ 416.
The examiner also takes the position that “although Moore
does not specifically describe rubber charge 16 as a silicone
crumb in a particulate form, it is well known in the art to use
such materials in similar applications as stated within the
specification of the instant application on page 2 lines 27-30”
(final rejection, page 3).
We will not sustain this rejection.
At the outset, the examiner’s reference to a portion of
appellants’ specification in support of the rejection is improper
and inappropriate since this portion of the specification is not
included in the list of prior art relied upon by the examiner in
support of the rejection and is not included in the statement of
the rejection. If a prior art teaching is relied upon in any
capacity to support a rejection, it should be positively included
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Last modified: November 3, 2007