Appeal No. 1996-3738
Application No. 08/004,254
word "tearing" would include trimming with a trimming die.
Moreover, Scott does not disclose trimming while the material
is still hot, as called for by the claim. The examiner seems
to believe that the "still hot" limitation should be given no
weight, arguing that (answer,
page 7):
With respect to the tearing being performed while
the material is still hot, such language is deemed
descriptive of the desired result and does not
further limit the claim as "still hot" is relative
and does not give metes and bounds to the claim.
In our view, this argument is not well taken. Although the
word "hot" may itself be a relative term, the claim language
"while the elastomeric material is still hot from the
injection step" defines for one of ordinary skill in the art
what is meant by "still hot." A specific limitation such as
this cannot be ignored in determining whether the claim
distinguishes over the prior art. In re Glass, 472 F.2d 1388,
1392, 176 USPQ 489, 491 (CCPA 1973).
Accordingly, we conclude that claim 39 is patentable over
the applied prior art, and will not sustain the rejection of
that
claim under § 103. The rejection of dependent claims 40 to
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