Ex Parte Telles - Page 4




         Appeal No. 2003-1705                                       Page 4          
         Application No. 09/904,058                                                 


              Appellant, on the other hand, urges that the different                
         application of the foam sealing material in Quandt would not               
         suggest the formation of a sealing ring that is adapted for a              
         toilet seal from such foam material to an ordinarily skilled               
         artisan.  In this regard, appellant asserts that there are                 
         numerous factors requiring consideration in selecting a material           
         for the type of gasket here claimed, such as listed on page 6 of           
         the brief, and that the teachings of Quandt do not address those           
         considerations.                                                            
              We find ourselves in agreement with appellant on this                 
         record.  While the examiner (answer, page 5) is correct that Izzi          
         teaches a sealing gasket that is suitable for a toilet seal                
         environment, the sealing gasket of Izzi is not made of                     
         polyethylene foam.  The examiner has not reasonably explained how          
         the teachings of Quandt with respect to tank seals made of                 
         polyethylene foam coupled with Izzi’s general description of some          
         of the desirable properties of a sealing material for a toilet             
         seal environment would be suggestive of selecting polyethylene             
         foam as the material for the gasket of Izzi with a reasonable              
         expectation of success in so doing.  See In re Dow Chemical Co.,           
         837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).  "Both            









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