Appeal 2007-2138
Application 10/645,885
combination of Suskind … and Bouchette" (id.) or "would have been
obvious" (id. at 6).
In order to satisfy the higher basis weight and synthetic fibers
requirements of the appealed claims, the Examiner's proposed combination
of Suskind and Bouchette must substitute the synthetic fibers of Bouchette
for the wood pulp fibers in the outer webs of Suskind's Example 4 fabric
while maintaining the higher basis weight characteristic of these outer webs.
However, even assuming an artisan would have replaced Suskind's wood
pulp fibers with synthetic fibers, the Examiner has proffered no reason why
the artisan would have effected this replacement while also maintaining the
aforementioned higher basis weight characteristic of Suskind's outer webs.
In this latter regard, we find no disclosure in Suskind which identifies this
characteristic as desirable or as serving any particular purpose. Stated
differently, it appears that the higher basis weight characteristic of the outer
webs in Example 4 is simply the non-consequential result of using outer
webs which contain wood pulp fibers.
As for the Appellants' claimed Air Permeability values, the Examiner
has provided no support for his belief that such values would be inherently
produced by replacing Suskind's wood pulp fibers with Bouchette's synthetic
fibers (Ans. 5). That is, the Examiner has provided no basis in fact or
scientific reasoning as support for the belief that use of the fiber materials
under consideration will necessarily and inevitably result in Air Permeability
values ranging from 300 to 1000 as required by the independent claims on
appeal. See Ex parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI 1990)(if
relying on theory of inherency, Examiner must provide basis in fact and/or
technical reasoning to support determination that allegedly inherent
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