Appeal No. 2005-2531
Application No. 10/148,759
In addition, the examiner (and the appellants) must consider
whether the appealed claims patentably distinguish over the prior
art including Fahrenkrug and Palumbo based on reasoning
completely unrelated to the unacceptable rationale discussed
above in relation to the Section 103 rejections advanced on this
appeal. The issue to be considered is whether the aforementioned
prior art includes repeating units which are encompassed by
independent claim 1 when given (as it must be) its broadest
reasonable interpretation consistent with the appellants’
specification. In re Hyatt, 211 F.2d 1367, 1372, 54 USPQ2d 1664,
1667 (Fed. Cir. 2000). To facilitate our following exposition of
this issue, we will discuss the prior art by referring to figures
9-13 of the appellants’ drawing (i.e., just as the appellants did
on pages 5-10 of their brief).
In their above noted discussion of figures 9-13, the
appellants implicitly have presumed that the apertured elastic
member 400 shown in these figures possesses only the repeating
units 470 as displayed in figures 9 and 11. This presumption is
incorrect. For example, this member also possesses repeating
units whose left and right borders (when viewed from direction
9
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