Ex parte FEIST - Page 7




          Appeal No. 1997-3342                                                        
          Application No. 08/389,086                                                  


          reduction to practice of an article which falls within the                  
          scope of claim 1.                                                           
               As to the invention defined by claims 5 through 9, the                 
          examiner has taken the position that it would have been                     
          obvious to position a waistcap/waistband over one end of each               
          barrier cuff disclosed in Figures 8 and 9 of Vandemoortele in               
          view of the teaching of Robertson (answer, page 6).                         
               Where the differences between the claimed invention and                
          the disclosure of the reference are so small as to render the               
          claims obvious over the reference, an affidavit or declaration              
          under 37 CFR  1.131 is required to show no more than the                   
          reference shows. In re Stryker, 435 F.2d 1340, 1341, 168 USPQ               
          372 (CCPA 1971).  Since we have already determined, supra.,                 
          that the Feist affidavit establishes reduction to practice of               
          an article which falls within the scope of claim 1 and shows                
          as much of the invention as is shown by Figures 8 and 9 of                  
          Vandemoortele, it follows that the Feist affidavit is also                  
          sufficient to overcome the standing 35 U.S.C.  103 rejections              
          of claims 5 through 9.                                                      




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