Appeal No. 1998-3425
Application 08/502,977
Like appellant, we observe that the roll of polyethylene
bags and the interrelationship between the structure of the
bags and the structure of the dispenser set forth in the last
clause of claim 8 on appeal are positive recitations clearly
establishing that the claimed subject matter is a combination
wherein a specific form of dispenser and a specific form of
polyethylene bags on a roll are set forth together as defining
the subject matter appellant regards as his invention. Thus,
the examiner’s attempt to dismiss these recitations as merely
relating to intended use of the dispenser per se is entirely
inappropriate, and for that reason alone we refuse to sustain
the examiner’s rejection of claims 8 and 9 under 35 U.S.C. §
103.
With regard to the examiner’s use of a per se rule such
as that derived from Ex parte Masham, we direct the examiner’s
attention to In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127,
1133 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 425-26,
37 USPQ2d 1663, 1666 (Fed. Cir. 1996) wherein the Federal
Circuit has held that the claimed invention as a whole must be
evaluated under the standards set down in Graham v. John Deere
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