Appeal No. 1998-2818
Application 08/550,521
art is not included in the specification does not mean that
such argument may be dismissed, as the examiner appears to
believe. See In re Chu, 66 F.3d 292, 298, 36 USPQ2d 1089,
1094 (Fed. Cir. 1995) (held, in case where examiner and Board
alleged that difference between prior art and appealed claim
was “design choice,” that there is no basis supporting
position that a patent applicant’s evidence or argument
traversing rejection must be contained within specification in
order to be considered).
On pages 7 and 8 of the answer, the examiner, citing 37
CFR § 1.111 and MPEP § 714.02, states that some of the
arguments advanced in appellant’s brief are untimely because
they were not previously presented. Suffice to say that this
viewpoint finds no support in 37 CFR § 1.111, MPEP § 714.02 or
any other provision of PTO practice.
In light of the foregoing, we will not sustain the
examiner’s rejection of claim 1, or claims 3, 4 and 9-12 that
depend therefrom, as being unpatentable over Uni-Charm or Kao.
We also will not sustain the examiner’s rejection of claims 2,
5-7, 13 and 14, which depend from claim 1, as being
11
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