Appeal No. 2003-1572
Application No. 09/661,747
is patentable over the prior art since to do so would of necessity
require speculation with regard to the metes and bounds of the
claimed subject matter. See In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970). Nevertheless, in this instance, we
are of the opinion that the issues on appeal can be resolved based
on those portions of the claimed subject matter that are
understandable.
Method claims 7 and 8 call for the step of applying to a
tissue region of a body a breathable, fabric enclosure having
therein a plurality of buckwheat hulls. Akin to these method
claims, article claim 9 calls for a pillow compress comprising a
breathable, fabric enclosure containing buckwheat hulls. In
rejecting the appealed claims as being unpatentable over Kellogg in
view of Chuang, the examiner acknowledges that the particles
contained in the enclosure 10 of Kellogg are not buckwheat hulls.
The examiner takes the position, however, that it would have been
obvious to one of ordinary skill in the art at the time of
appellant’s invention to substitute buckwheat hulls for the
particles contained in Kellogg’s enclosure in view of the teachings
of Chuang, said substitution being “a matter of design for art
recognized equivalents” (answer, page 3). We do not agree.
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