Appeal No. 1998-2817
Application No. 08/455,366
in fact, recognize that for wearing stability the decay of the
elastic waistband over a number of cycles, which the reference
refers to as elastic creep, should be kept to a minimum. See
Weil, col. 3, ll. 51-59.
Also, the appellants describe Ales and Weil as lacking
any teaching with respect to the problem addressed by the
appellants’ invention and argue that the failure of the art to
address the problem of elastic decay should be taken into
account when deciding whether the references can be combined
under 35 U.S.C.
§ 103.
This argument is not persuasive since the “[m]ere
recognition of latent properties in the prior art does not
render nonobvious an otherwise known invention” (In re Baxter
Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1282, 1285 (Fed.
Cir. 1991)) and “[t]he fact that appellant has recognized
another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise have been
obvious” (Ex parte Obiaya, 227 USPQ 58 (Bd. Pat. App. & Int.
19
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007