Appeal No. 2001-0271 Page 5
Application No. 08/855,474
computer disk to be a positive recitation of the computer disk
in combination with the pad, thereby conflicting with the
preambular language, which indicates that the claim is
directed to a pad only (answer, pp. 3-4).
We do not share the examiner's view that the recitations
of claims 8-10 constitute positive recitations of the computer
disk. Like appellant (brief, p. 5), we view the recitations
at issue in claims 8-10 to be merely recitations of the
thickness of the middle layer(s) as being that of a computer
disk. We see nothing in this which indicates that a disk is a
required element of the claims and, thus, see no inconsistency
between the limitations at issue and the preamble of the
claims. Claims 8-10 are directed to the subcombination of the
pad.
For the foregoing reasons, the examiner's indefiniteness
rejection of claims 8-10 is not sustained.
The obviousness rejections
With regard to rejection (2), as appellant has chosen to
argue the patentability of the claims without regard to any
particular claim, we shall consider each of the appellant's
arguments based on representative claim 12, with claims 1-9,
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