Appeal No. 1998-0243
Application 08/455,374
Figures. 5 and 6, the edge portions 102, 104 of the base layer 98 are not folded over the elastic
member 88 (contained in composites 97 and 112), but instead the composites are attached to the
edge portions of the base layer by adhesive 74 (page 44, lines 19 to 24).
Turning to the merits of the rejection, the examiner describes on pages 3 and 4 of the
answer the portions of the disclosures of Nomura and Magid which are relevant to the method
recited in claim 1; in particular, we note that Nomura discloses at col. 7, lines 19 to 22, that the
adhesive 32, to which the waist elastic members 4 are bonded, may be applied “in a plurality of
dots, intermittent lines or helical lines.” As for the combination of Nomura and Magid, the
examiner asserts that (answer, pages 4 to 5):
It would have been obvious to one having ordinary skill in the art to have folded
the waistband, as is known from Magid, in the method of Nomura in order to provide
better integrity and strength at the waistband because both references are directed to the
construction of training pants. It is the examiner’s position that in the above
combination, it would have been obvious to one having ordinary skill in the art to fold the
waistband after application of the elastic material but before the step of folding along the
central line 34.
Appellants contend that the combination would not have been obvious because the references do
not recognize the problems discovered and solved by appellants, and there is no suggestion or
compelling motivation to produce the claimed invention (brief, page 7).
We do not agree with appellants’ argument. The case of In re Wright, 848 F.2d 1216,
1219, 6 USPQ2d 1959, 1961 (Fed. Cir. 1988), cited by appellants at page 7 of their brief, has
been overruled to the extent that it held that a prima facie obviousness rejection is not supported
if no reference shows or suggests the newly-discovered properties and results of a claimed
3
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