Appeal No. 98-2156 Page 15
Application No. 08/421,489
To the contrary, page 8 of the specification merely states
that these ranges are "preferred." Similarly, we do not 6
believe that the range thicknesses (i.e. about 0.015-0.060
inches) set forth in claim 18 serves to patentably distinguish
this claim over the prior art. This being the case, we will
sustain the rejection of claims 3, 4 and 18 based on the
combined teachings of Kiley, Kimura and Lux.
Turning to the rejection of claim 10, the examiner
considers that it would have been obvious to form the one-
piece box of Kiley, as modified by Kimura, from two sheets of
cross-linked polyethylene foam that have been adhered together
and which have different densities in view of the teachings of
Lux. We do not agree. In column 2 Lux broadly teaches that7
6As the court in In re Rauch, 390 F.2d 760, 156 USPQ 502,
503 (CCPA 1968) stated: "[m]erely because appellant's
specification denotes those limitations as 'preferred' does
not, without more, establish them as critical."
7The examiner should consider whether dependent claims
such as 10 (which recites that the box is formed of two sheets
of different density that are adhered together) and 12-14
(which recite that a fabric material is affixed to the hinge)
may properly depend from parent claim 1 which recites a one-
piece box. See In re Hotte, 475 F.2d 644, 647, 177 USPQ 326,
329 (CCPA 1973) for a discussion of the difference between
"one-piece" and "integral." Note also Advanced Cardiovascular
Systems Inc. v. Scimed Life Systems, Inc., 887 F.2d 1070,
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