Appeal No. 98-2787
Application 08/554,640
elastic members substantially coterminous with a terminal side
edge of each side margin of the absorbent article provides the
advantages of more effectively 1) holding the terminal edges
of the article against the wearer’s body and 2) reducing the
amount of unsightly or loosely-fitted free edges. In this
light, it is clear to us that the limitation at issue cannot
be dismissed as merely being a matter of "obvious design
choice," based solely on the examiner's bald assertion that
such is the case. On the contrary, in a proper obviousness
determination, the examiner is required to consider the
totality of the record, including all evidence and arguments
presented by appellants during the give-and-take of
ex parte patent prosecution, and to evaluate even minor
changes in terms of the invention as a whole and in the
context of whether the prior art provides any teaching or
suggestion to one of ordinary skill in the art to have made
the changes that would produce appellants’ claimed absorbent
article. See, for example, In re Chu, 66 F.3d 292, 298-99, 36
USPQ2d 1089, 1094-95 (Fed. Cir. 1995) and In re Gal, 980 F.2d
717, 719, 25 USPQ2d 1076, 1078 (Fed. Cir. 1992) which notes
that a finding of “obvious design choice” is precluded where
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007