Appeal No. 1998-2065
Application 08/713,788
finds no cure in the fact that apparel elastic is admittedly
old and well known (see page 7 in the main brief). The
examiner’s conclusion that it would have been obvious to
substitute apparel elastic for Samuel’s elastic loop 20
because they are equivalent elements which perform the same
function is unsound for two reasons. First, the examiner has
not proffered any evidence establishing that Samuel’s elastic
loop 20 and apparel elastic are, or would have been recognized
as, functional equivalents. Second, expedients which are
functionally equivalent to each other are not necessarily
obvious in view of one another. In re Scott, 323 F.2d 1016,
1019, 139 USPQ 297, 299 (CCPA 1963). Here, there is nothing
in the teachings of Samuel and the conventional knowledge of
apparel elastic which would have made it obvious to one of
ordinary skill in the art to modify the Samuel trash bag in
the manner proposed by the examiner.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, or of claim 2 which depends
therefrom, as being unpatentable over Samuel.
With regard to the 35 U.S.C. § 112, first paragraph,
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