Ex parte TOYODA - Page 8




          Appeal No. 1998-2818                                                        
          Application 08/550,521                                                      


          terminate at the edges of the unitarily formed ear portions.                
               In rejecting claim 1 as being unpatentable over Uni-Charm              
          or Kao, the examiner considers that the ear portions of the                 
          diapers of Uni-Charm and Kao correspond to the claimed side                 
          panel portions.  The examiner concedes on page 3 of the final               
          rejection that these ear portions are not separately formed                 
          apart from their respective body portions and then affixed                  
          thereto.  The examiner takes the position, however, that                    
          appellant does not disclose the criticality of this form of                 
          construction and that, accordingly, it have been would an                   
          obvious matter of design choice to separately form the side                 
          panels of Uni-Charm or Kao since such modification would have               
          involved a mere change from unitarily formed to separately                  
          formed parts “which is recognized by case law as being                      
          generally within the level of ordinary skill. . . .  In the                 
          instant, crowded and commercially viable diaper art such                    
          changes would likewise be recognized as being within the level              
          of ordinary skill in the art” (answer, page 4).                             
               We will not support this rationale.  In rejecting claims               
          under 35 U.S.C.  103, the examiner bears the initial burden                
          of presenting a prima facie case of obviousness.  In re                     
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