Appeal No. 97-3983
Application 08/506,851
claim 9 is based on a limitation which was proposed subsequent to final rejection and
refused entry by the examiner (see page 6 in the brief). Since the limitation in question
does not appear in the claim, the appellant’s argument fails at the outset (see In re Self,
671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982)).
Therefore, we shall sustain the standing 35 U.S.C. § 103 rejection of claim 9 as
being unpatentable over Smith in view of Coffman.
We also shall sustain the standing 35 U.S.C. § 103 rejection of dependent claims
10 and 11 as being unpatentable over Smith in view of Coffman since the appellant has
not challenged such with any reasonable specificity, thereby allowing these claims to stand
or fall with parent claim 9 (see In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987)).
We shall not sustain, however, the standing 35 U.S.C. § 103 rejection of dependent
claim 12 as being unpatentable over Smith in view of Coffman.
Claim 12 further defines the temporary storage compartment recited in parent claim
9 as being “at a height enabling it to be positionable over and be discharged into a toilet
bowl.” In short, the combined teachings of Smith and Coffman would not have suggested
providing the Smith apparatus with a temporary storage compartment positioned at such a
height. The examiner’s determination that “the term ‘positionable over’ fails to define
structure that distinguishes over the art here in that any device can be lifted to such a
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