Ex Parte Hirshberg - Page 8




          Appeal No. 2004-0061                                                        
          Application 09/745,762                                                      


          retained within a first large interior compartment of the bag and           
          divided therefrom by an interior dividing wall which segregates             
          the second compartment from the remainder of the first large                
          interior compartment.                                                       


          As for the examiner’s further position that the detachable                  
          absorbent sheet (22) in Shreim, identified by the examiner as               
          corresponding to the rollable mat of appellant’s claims on                  
          appeal, can be formed of the same PVC material as the exterior of           
          the bag “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,” and the position that it would have been obvious            
          to one having ordinary skill in the art to make sheet/mat (22) of           
          Shreim “being permanently affixed as claimed, since it has been             
          held that constructing a formerly integral structure in various             
          elements involves only routine skill in the art,” we find such              
          positions to be untenable and entirely contrary to the clear                
          teachings in the Shreim reference (page 1, lines 97-110)                    
          concerning the detachable, absorbent fabric sheet (22).  In our             




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