Appeal No. 2005-2531
Application No. 10/148,759
First, the fact that the here claimed and prior art members
are for the purpose of absorbing liquids plainly does not support
the examiner’s proposition that the spacing/aperture arrangements
of Fahrenkrug and Palumbo are functionally or structurally
equivalent to the appealed claim 1 feature “wherein the
nonapertured region of the repeating unit has substantially the
same cross sectional area everywhere along the repeating unit in
a plane that is parallel to the second direction.” This lack of
equivalency is evinced, for example, by the specification
disclosure concerning figures 9-13 and particularly by the first
whole paragraph on specification page 17.
Second, even if the examiner’s equivalency determination
were assumed to be proper, her concomitant obviousness conclusion
still would be in error. For over forty years, it has been well
settled that the mere existence of functional and mechanical
equivalents is inadequate to establish a prima facie case of
obviousness. In re Flint, 330 F.2d 363, 367-68, 141 USPQ 299,
302 (CCPA 1963); In re Scott, 323 F.2d 1016, 1019-20, 139 USPQ
297, 299 (CCPA 1963). Also see MPEP § 2144.06 (Revision 2, May
2004).
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