Appeal No. 98-1234
Application No. 08/516,214
is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Here, even if the references were combined in the manner
proposed by the examiner, the claimed invention would not
result. More specifically, independent claims 1 and 27 each
expressly requires (1) "an outer coating of relatively soft
elastomeric material completely surrounding the core"
(emphasis ours) and (2) "fasteners extending through the
ferrule and outer coating into the core of the handle"
(emphasis ours). There is simply nothing in the combined
teachings of the relied on prior art which would fairly
suggest either of these limitations.
With apparent reference to limitation (1), the answer on
page 4 states that "[s]ince the wooden core of the brush of
Marick can be dipped into the rubber (Column 3; Line 15),
Kaplan's device, once modified, would have the elastomeric
material completely surrounding the core." We do not agree
that Marick either teaches or fairly suggests that the
elastomeric material completely surround the core of the
handle as the examiner appears to believe. Marick in column
4
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