Appeal No. 98-2031
Application 08/794,154
the art would have found it obvious to use the compliant and resiliently deformable gelatinous elastomer
of Chen in Runckel to make the cushion/seal (42) of Runckel. To the extent that sealing characteristics
of the compositions of Chen with the skin of the human body may not be specifically described therein,
we note that the mere recitation of what may
amount to a newly discovered function or property, inherently possessed by a structure in the prior art,
does not cause a claim drawn to such structure to distinguish over the prior art. See In re Swinehart,
439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971).
Accordingly, the examiner's rejection of appellants’ claim 1 under 35 U.S.C. § 103 based on
the combined teachings of Runckel and Chen will be sustained. Further, in accordance with appellants’
grouping of the claims (brief, page 4), it follows that claims 38, 41, 58, 60, 64 and 65 will fall with claim
1.
With regard to the examiner's rejection of claim 2 on appeal under 35 U.S.C. § 103, we share
the examiner’s view that it would have been obvious to one of ordinary skill in the art at the time of
appellants’ invention to select a gelatinous elastomer of Chen for use in Runckel having a degree of
compliancy within the broad range set forth by appellants in claim 2. Runckel describes the pad (42)
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