Appeal No. 2005-0878
Application No. 09/911,620
pad attached by hook-and-loop fasteners to the rear surface of
the breast prosthesis as taught by Eberl with the prosthesis of
Brickman “to allow a substantially larger cavity” and thus reduce
costs and the tendency of the prosthesis to collapse (id.).
Appellant correctly argues that nowhere in Brickman is there
any teaching of a comfort pad in addition to a bust cup and
breast prosthesis (Brief, page 7). Brickman teaches a swimsuit
construction with a pair of “cup-shaped pads or inserts 40"
(Figures 4, 5 and 6) or 80 (Figure 8)(col. 2, ll. 11-13 and 66-
70). In addition, the examiner has not established any
convincing reason, motivation or suggestion for the proposed
combination of the swimsuit construction of Brickman with the
breast prosthesis of Eberl. See In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). The examiner has
failed to establish why one of ordinary skill in the art of
making breast prostheses would have been led to the swimsuit
construction taught by Brickman. Furthermore, the examiner has
not established why one of ordinary skill in the art would have
added a “comfort” pad of Eberl, with its attendant fasteners, to
the back of the pads 40, 80 of Brickman. The reasons given by
the examiner (to allow a substantially larger cavity and reduce
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