Appeal 2006-2384
Application 10/003,037
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
D. Analysis
We agree with Appellants that the Examiner has failed to identify a
teaching or suggestion in the art of gas-relief passageways meeting the
requirements of claims 1 and 28 (Br. 5 and 13). In the rejections of claims 1
and 28, the Examiner relies upon C2 and Morgan, respectively, as teaching
the claimed passageways. Specifically, the Examiner relies upon a space
between the casings of C2 and the seams of Morgan as the claimed
passageways. But as claimed, the passageways must be positioned “within”
a membrane (within either the first float compartment membrane or the first
membrane). The spaces between the casings of C2 and between the seams
of Morgan are not “within” a membrane as claimed (FF 4 and 9).
The Examiner did not specifically discuss claim 32 in the rejection
over the admitted prior art (C2 and C4) in view of Gerber (Answer 3-5).
However, in response to Appellants’ contention that the prior art contains no
suggestion of “positioning the covering system to allow gas from the body to
vent directly to atmosphere around the outer edge of the first membrane,”
the Examiner contends that the cover of C4 “is capable of this venting,”
because “the membrane in C4 is described, alternately, as ‘battened to the
top of a concrete ring wall’” and “battening is not a gas tight seal. (Webster
Dictionary meaning of battening is to fasten with a thin narrow strip of
lumber).” (Answer 13).
Claim 32 is a method claim which affirmatively requires a step of
positioning the covering system to allow venting “around the outer edge of
the first membrane.” There is no convincing evidence that venting around
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