Appeal No. 97-2597
Application 08/176,056
to the location of the absorbent core in Boland as follows:
Appellant’s remarks [in the brief] . . . have
been considered but are deemed nonpersuasive.
Appellant appears to argue that a prior art
reference most be provided to teach all the
elements. However, there is a whole body of case
law including In re Kuhle, 188 USPQ 7 (CCPA 1975)
and In re Japikse which is inconsistent with such
argument. See also claim 1 of Boland et al, i.e.,
the absorbent is superimposed on an elastic nonwoven
web joined to at least one gatherable nonwoven web,
but does not say innermost web of outer cover, and
is thus not so limited. The lack of disclosure of
the criticality of the claimed invention (Figure 3)
over the prior art (similar to Figure 4), the prior
art’s non-limitation to only the structure of Figure
4 and the case law provide the prima facie case of
obviousness. [Answer, pages 5-6.]
We will not sustain this rejection.
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In making such a rejection, the examiner has the initial duty
of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
Claim 29 expressly requires that the absorbent core is
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