Appeal 2007-1323
Application 10/032,701
a portion thereof as required by claims 11 and 31.1 However, as the
Examiner recognizes, Igaue does not teach the specific tear strength set forth
in claims 11 and 31 (Answer 4). Nevertheless, the Examiner asserts that
Igaue’s diaper inherently has the claimed tear strength. We disagree.
As Appellants explain, “merely providing a perforation or line of
weakness in a panel does not necessarily result in the panel having the
claimed tear strength” (Br. 8; Reply Br. 3). Appellants explain that “[t]he
tear strength can depend on many parameters, including . . . the
configuration of the line of weakness” (id.). We are persuaded by
Appellants’ assertion that the configuration of the line of weakness may give
rise to a difference in tear strength. Igaue simply states that “cutting lines
are formed by intermittent cuts or perforations” (Igaue 3). “Under the
principles of inherency, if the prior art necessarily functions in accordance
with, or includes, the claims limitations, it anticipates.” In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir.
2002), citation omitted. On this record, there is no teaching or suggestion in
Igaue that these intermittent cuts or perforations will inherently lead to the
tear strength required by claims 11-20, 31-40, 45, and 46. Accordingly, we
reverse the rejection under 35 U.S.C. § 102(b).
Obviousness:
Claims 11-20, 31-40, 45, and 46 stand rejected under 35 U.S.C.
§ 103 as obvious over Igaue. Appellants provide three claim groupings: (I)
claims 11-13, 15, 17-20, 31-34, 36-40, and 46; (II) claims 14 and 45; and
1 Claims 12-20 and 45 ultimately depend from claim 11. Claims 32-40 and
46 ultimately depend from claim 31.
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