Appeal No. 1998-0243
Application 08/455,374
no stated problem.” In particular, as to claim 1, appellants disclose that the reduction in loss of
elasticity (decay) solves a problem, in that they state at page 40, lines 9 to 12, that it is “[a]nother
important factor in providing a substantially uniform low tension over a wide size range, a more
comfortable fit, and improved ease of use.”
However, this does not resolve the issue because it is well settled that:
The law is replete with cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims. See, e.g., Gardner v. TEC
Sys., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir.), cert. denied, 469 U.S. 830 (1984);
In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Ornitz, 351 F.2d 1013,
147 USPQ 283 (CCPA 1965); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
These cases have consistently held that in such a situation, the applicant must show that
the particular range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. Gardner, 725 F.2d at 1349, 220 USPQ
at 786 (obviousness determination affirmed because dimensional limitations in claims did
not specify a device which performed and operated differently from the prior art); Boesch,
617 F.2d at 276, 205 USPQ at 219; Ornitz, 351 F.2d at 1016-17, 147 USPQ at 286; Aller,
220 F.2d at 456, 105 USPQ at 235.
In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). See also
In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). Here, the upper
decay limit of about 66.67 grams, recited in claim 1, is the higher of the average decay for
appellants’ Embodiments 1 and 2 (Table 13, page 30). Table 13 shows that this figure is lower
than the average decay for Samples 1 to 7, but although appellants identify these Samples at
pages 15 and 16 as being various commercially available training pants, they do not disclose how
their waist elastic systems are constructed, so that it cannot be determined whether any of the
Samples have an elastic member joined to another layer at less than its full length, and if so, what
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007