Appeal No. 2001-2586
Application No. 08/856,501
It is our finding that the substrate of Tselesin, although
a preform, is not a tool body. The embodiments disclosed there-
in appear to be restricted to a flat, albeit flexible, two-
dimensional shape. The examiner has argued that it would have
been obvious to apply the technique of Tselesin to construct a
three-dimensional tool in view of the teaching of Steindler.
However, the examiner is unable to point to a suggestion or
motivation for this modification of the Tselesin process. In our
view it is simply not obvious to do so, barring some suggestion
or motivation recognized in the art.
Additionally, if the rationale of the rejection were to have
been the obviousness of placing the preforms of Tselesin on a
tool body as shown in Steindler, such a process would require
another step in the process of claims 1 or 8 and would not
satisfy the “consisting essentially of” language of the claim.
Such a modification would be the addition of another material
step to the claimed invention.
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