Appeal No. 2002-0846
Application 09/503,452
claimed method. See Ex parte Hoffmann, 12 USPQ2d 1062, 1063-64
(BPAI 1989).
Here, we are not convinced by the examiner’s statements in
support of her conclusion that the rods of Hamano would not
materially affect the method recited in appellants’ claims. To
the contrary, we find that incorporation of the support rods 12
of Hamano into the presently claimed method would materially
affect the basic and novel characteristics of the method. For
example, looking at appellants’ figures 3a and 3b, certainly if
the rods are incorporated into the depicted method, the rods
would interfere with the ability of the thermoplastic material to
deform as set forth in step (c) when the web backing is moved
into and through the gap. The examiner has not explained how the
rods would not interfere in this regard. The examiner simply
states that the rods in Hamano are used to maintain the loops in
the upstanding position. Yet, the examiner does not explain why
the rods would not interfere with the method in a material way
when the rods are incorporated into the method as depicted in
figures 3a and 3b.
Hence, we agree with appellants’ statement made on page 9 of
the brief that the language “consisting essentially of” excludes
the supporting rods required in Hamano.
We further are mindful of the discussion made on page 10 of
the brief regarding the alternative embodiment of Hamano
involving the use of a chemical solvent to chemically soften the
top portions of the loops. We are in agreement with appellants’
conclusions drawn therein also.
We have reviewed appellants’ reply brief in which Dr.
Miller’s declaration is discussed. However, because we have
determined that the examiner has not set forth a prima facie
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