Appeal No. 2005-0263
Application No. 10/314,766
no express teaching whatsoever regarding the core size or volume
of the soap bar elements respectively disclosed therein.
Nevertheless, the examiner concludes that it would have been
obvious for one with ordinary skill in this art to size the core
in each of Hadley, Allen and Di Giovanna such that it occupies at
least about 75 volume percent of the bar element as required by
the independent claim on appeal.
The examiner has presented a variety of rationales in
support of this obviousness conclusion, some of which are of
questionable merit.1 Regardless, we consider as well taken the
examiner’s fundamental position that the applied reference
disclosures would have suggested a range of core sizes including
the here claimed size of at least 75 volume percent. For
example, as correctly indicated by the examiner on page 6 of the
answer, Figures 2 and 3 of Allen cumulatively disclose a core
size that either is within, or at least would have suggested, the
here claimed range of at least 75 volume percent. In re Meng,
1 Specifically, in the January 20, 2004 Office action, the
examiner has cited In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA
1947) for the proposition that matters relating to ornamentation
only which have no mechanical function cannot be relied upon to
patentably distinguish a claimed invention from the prior art.
This citation quite plainly is inapposite to the case before us
since the appealed claim 1 feature under consideration
unquestionably performs a function and therefore does not relate
to ornamentation only.
4
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