Ex parte TOYODA - Page 11




          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                         


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