Appeal 2006-3402
Application 10/397,949
(Answer 4). The Examiner also finds that Knox-Sigh lacks the pad
dimensions called for in claims 5-8, but determines that it would have been
obvious to modify the dimensions of Knox-Sigh according to the wearer’s
size and according to the intended use and function of the article, such size
and shape limitations being well within the scope of the invention of Knox-
Sigh, and, further, that it would have been obvious to include the recited
dimensions as shown by Muller in order for the pad to function as intended
(Answer 4).
Appellants do not contest that the modifications to Knox-Sigh
proposed by the Examiner would have been obvious. The combinability of
the teachings of Hyun and Muller with Knox-Sigh are thus not at issue in
this appeal. Rather, Appellants contend that Knox-Sigh fails to meet other
limitations of claim 1 not addressed by the Examiner’s proposed
modifications (Br. 4-6). Specifically, Appellants argue that (1) Knox-Sigh
fails to teach or suggest a main pad body being “substantially planar,”
inasmuch as Knox-Sigh’s main portion 25 “curves upwardly from tail
portion 28 towards the positioning point 26” (Appeal Br. 4-5) and (2) since
Knox-Sigh’s tail 28 is formed of absorbent material, “it is not physically
possible for the absorbent core system to not significantly extend beyond the
anterior portion of the perineum in use as expressly required by claim 1”
(Appeal Br. 5). Accordingly, the only issue before us is whether Appellants’
arguments demonstrate the Examiner erred in rejecting claims 1-4 and 9 as
unpatentable over Knox-Sigh in view of Hyun and claims 5-8 as
unpatentable over Knox-Sigh in view of Hyun and Muller.
It is well established that limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348, 213
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013