Appeal 2007-2292
Application 10/038,796
It follows that, on this record, we shall sustain the Examiner’s
anticipation rejection of claims 17-19, 25, 27, and 30.1
§ 103(a) Rejection over Sommers
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Sommers discloses a surgical glove retainer comprising an elastic
strip having a first surface with an area of loops near one end and a second
surface having an area of hooks near a second end (Sommers, col. 3, ll. 10-
25; Fig’s. 1 and 2). The Examiner takes the position that Sommers does not
disclose contraction of the loop component at the seam and disavows
reliance on an inherency theory in rejecting the claimed method (Answer 5
and 9). In this regard, the Examiner asserts that
“to attach the ends of the elastic strip of Sommers under tension
by stretching the one end including the loop component,
bringing it into engaging contact with the other end to form a
seam and releasing the one end so that the one end, i.e. loop
component, at the seam retracts/contracts, if not already, would
be obvious to one of ordinary skill in the art in view of the well
known interchangeability of methods of attachment”
(Answer 5).
1 In the event of further prosecution of this subject matter before the
Examiner, the Examiner should again review Appellants’ Specification for
the specific details of how the loops themselves are expanded/contracted and
redetermine whether Appellants have furnished a satisfactory descriptive
and/or enabling disclosure in accordance with § 112, paragraph 1 for the
method, as claimed. This is especially so, in light of Appellants’
unsupported assertions about the location where pulling is applied (Br. 7) as
seemingly having a significant affect on whether the contraction of the loop
is being performed.
8
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