Appeal No. 97-2597
Application 08/176,056
appellants’ disclosure is part of the prior art). The
examiner’s contention that the claimed placement of the
absorbent core would have been obvious because appellants do
not disclose the criticality thereof also is not well taken.
Criticality is not a requirement of patentability. See W. L.
Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ
303, 315 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
As to the examiner’s reliance on In re Kuhle, 526 F.2d 553,
188 USPQ 7 (CCPA 1975) and In re Japikse, 181 F.2d 1019, 86
USPQ 70 (CCPA 1950) in support of her position that the
claimed placement of the absorbent core is merely a matter of
design choice, appellants argue on page 6, lines 19-37 of the
brief that the claimed placement of the absorbent core
achieves a different result as compared to the placement of
the absorbent core in the prior art. This argument may not be
ignored, as the examiner appears to have done, simply because
it does not appear in the specification. See In re Chu, 66
F.3d 292, 298, 36 USPQ2d 1089, 1094 (Fed. Cir. 1995) (held, in
case where examiner and Board alleged that difference between
prior art and appealed claim was “design choice,” that there
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