Ex parte KLING et al. - Page 18




          Appeal No. 2000-0855                                                        
          Application No. 08/597,377                                                  


          together                                                                    




          through said perforations portions of the layers of at least                
          partially meltable material located opposite said perforations              
          by heat fusion so that the layers are bonded to one another                 
          through the perforations as recited in claim 1, but the                     
          examiner acknowledges that Proxmire does not teach the step of              
          passing a uniformly stretched elastic band over a bonding                   
          roller having a pattern of raised portions as called for in                 
          claim 3.  Nevertheless, the examiner concludes that the step                
          recited in claim 3 is a matter of engineering design choice.                
               However, the case the examiner relies upon (answer, p.                 
          6), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), does                 
          not support the examiner’s position.  In Kuhle, "the applicant              
          failed to set forth any reasons why the differences between                 
          the claimed invention and the prior art would result in a                   
          different function or give unexpected results."  In re Chu, 66              
          F.3d, 292, 298-9, 36 USPQ2d 1089, 1094 (Fed. Cir. 1995).                    
          Here, the appellants explain (main brief, p. 31) that “the                  
          formation of the perforations in the elastic band is                        
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