Appeal No. 2002-0938 Page 3
Application No. 08/958,182
Each of appellant’s independent claims 3, 4 and 7 requires the application or
dispensing onto a sheet of toilet paper of a gel of sufficient viscosity to prevent
noticeable disintegration of the toilet paper when the gel is applied thereto. Gold, in
contrast, discloses dispensing either a liquid or a powder onto a special toilet paper 16
having a moisture resistant backing which prevents the applied liquid from penetrating
through the entire paper and causing it to shred or disintegrate upon use (column 3,
lines 27-33). Gold teaches that the liquid can be a fluid spray, mist or foam that is
either medicated or non-medicated (column 1, lines 58-59). The examiner concedes
that Gold does not disclose dispensing gel onto a sheet of toilet paper, as called for in
appellant’s claims, but contends that it would have been obvious to one of ordinary skill
in the art at the time of appellant’s invention “to incorporate gel into Gold, since it has
been held to be within the general skill of a worker in the art to select a known material
on the basis of its suitability for the intended use as a matter of obvious design choice”
(non-final action mailed June 6, 2000, page 2).
The examiner is correct that it has been held that the selection of a known
material based upon its suitability for the intended use is a design consideration within
the skill of the art. See In re Leshin, 227 F.2d 197, 199, 125 USPQ 416, 418 (CCPA
1960). However, rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the invention is patentable, resort to
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