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Predictable Use of Prior Art Elements Requires Minimal Obviousness Analysis

In Ex Parte Smith (BPAI, June 25, 2995, per curium), the Board considered two, post-KSR obviousness issues.

The first was whether Appellant had shown that the Examiner erred in rejecting claims 1-9, 11-13, 16-18, and 32-24 under 35 U.S.C. § 103(a) as unpatentable over Wyant in view of Dick. That issue turned on whether it would have been obvious to glue two separate sheets to form a continuous two-ply seam, as taught by Dick, rather than folding one sheet to create a seam along the folded edge, as taught by Wyant.

According to the precedential opinion,

The question is whether one of ordinary skill in the art starting with Wyant’s two-ply pocket would have found it obvious at the time the invention was made to modify Wyant's pocket insert to include a continuous two-ply seam as taught by Dick for providing a more secure pocket. In considering the teaching of Wyant and Dick, we have found that (1) each of the claimed elements is found within the scope and content of the prior art; (2) one of ordinary skill in the art could have combined the elements as claimed by methods known at the time the invention was made; and (3) one of ordinary skill in the art would have recognized at the time the invention was made that the capabilities or functions of the combination were predictable. Furthermore, neither Appellant’s Specification nor Appellant’s arguments present any evidence that cutting the folded edge of Wyant and gluing the resulting separate pocket sheet and base sheet along the cut edge to form a continuous two-ply seam as taught by Dick was uniquely challenging or difficult for one of ordinary skill in the art. The substitution of the continuous, two-ply seam of Dick for the folded seam of Wyant thus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement." KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Therefore, it would have been obvious at the time the invention was made to modify Wyant's pocket insert to attach a separate pocket sheet to a base sheet to form a pocket insert with continuous two-ply seams as taught by Dick.

This conclusion is consistent with the line of case from the Federal Circuit and its predecessor court. See, e.g., In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 8-9 (CCPA 1975) (holding that the claimed manner in which an electrical contact was made, i.e. by "metallic wrapping," that provided no novel or unexpected result over the metallic connections used in the applied references was an obvious choice within the skill of the art) (cited with approval in In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094 (Fed. Cir. 1995)). In the present case, the disputed claim limitation of "continuous two-ply seams" and the function it performs—to create a pocket—are identical between the claimed invention and the prior art. Thus, the selection of the continuous two-ply seam of Dick over the folded seam of Wyant represents an obvious choice within the skill of the art, i.e., a choice between known viable alternatives.

Appellant argues that Wyant and Dick teach away from each other (Substitute Br. 14-18). The Examiner believed otherwise, finding that Wyant and Dick do not teach away from each other, and that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Wyant's pocket insert with a separate pocket sheet attached to a base sheet to form a pocket insert as taught by Dick (Answer 5-6).

In particular, Appellant argues that Wyant and Dick teach away from each other because combining Dick with Wyant would render Wyant inoperable for its primary purpose—namely providing tabs that selectively can be folded outward of the edge of the card (Substitute Br. 11). The Examiner correctly found that if the base sheet and pocket sheet were attached along the perimeter edge as disclosed in Dick, it would still be possible to fold back the tabs of Wyant near its attached perimeter edge (Answer 6). Appellant argues that the only way the tabs of Wyant can be formed is by forming the tab yielding sheet and the base sheet from a single piece of material to form a folded line (Substitute Br. 11). Although this method is consistent with an embodiment disclosed in Wyant, there is nothing in Wyant that requires or suggests that this is the only way to attach tabs that can be selectively folded outward, much less to teach away from the use of a pocket constructed on one side surface of a base sheet, the element for which the Examiner relies on Dick (Answer 5).

Where, as here, art is silent on the capabilities or function of any particular item, that is not teaching away from its use. Further, the Court in KSR noted that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." 127 S.Ct. at 1742, 82 USPQ2d at 1397. It would take no more than ordinary creativity for a person of ordinary skill to adapt Wyant to form tabs with the base sheet and pocket sheet attached along the perimeter edge as disclosed in Dick.

Appellant’s claims 1-9, 11-13, 16-18, and 32-34 were combinations which only unite old elements with no change in their respective functions and which yield predictable results. Thus, the claimed subject matter likely would have been obvious under KSR. In addition, neither Appellant’s Specification nor Appellant’s arguments present any evidence that the modifications necessary to effect the combination are uniquely challenging or difficult for one of ordinary skill in the art. Because this is a case where the improvement is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396, no further analysis was required by the Examiner. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396. Under those circumstances, the Examiner did not err in holding that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Wyant's pocket insert with a separate pocket sheet attached to a base sheet to form a pocket insert as taught by Dick for providing a more secured pocket.


The second obviousness issue was whether Appellant has shown that the Examiner erred in rejecting claims 10, 14, 15, 19-21, and 36 under 35 U.S.C. § 103(a) as unpatentable over Wyant in view of Dick, and further in view of Ruebens. That issue turned on whether it would have been obvious to improve a pocket insert by creating two pockets from a single pocket using an additional line of adhesive.

The Examiner relies on Ruebens to show a pocket sheet that is adhered to a base sheet along the base sheet's perimeter edge and along a strip or inner portion, which separates the pocket sheet into two pockets (Answer 5). One of skill in the art would have been able to combine the adhesive strip of Ruebens with the combination of Wyant and Dick asserted by the Examiner in the preceding rejection using methods known at the time the invention was made in the bookbinding art. Moreover, each of the elements of Wyant, Dick, and Ruebens combined by the Examiner performs the same function when combined as it does in the prior art. Thus, such a combination would have yielded predictable results. See Sakraida, 425 U.S. at 282, 189 USPQ at 453.

Claims 10, 14, 15, 19-21, and 36 were combinations which only unite old elements
with no change in their respective functions and which yield predictable results. Thus, the claimed subject matter likely would have been obvious under KSR. In addition, neither Appellant’s Specification nor Appellant’s arguments present any evidence that the separation of one pocket into two pockets using an additional line of adhesive is uniquely challenging or difficult for one of ordinary skill in the art. Moreover, the separation of one pocket into two pockets using an additional
line of adhesive is a technique that has been used to improve one device (the
photo album of Ruebens), and one of skill in the art would recognize that it
would improve similar devices in the same manner. Because Appellant has not
shown that the application of the Ruebens technique to the combination of Wyant
and Dick would have been beyond the skill of one of skill in the art, we find
using the technique would have been obvious. Under those circumstances, the
Examiner did not err in holding that it would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Wyant's
and Dick's pocket insert with an adhesive strip, as taught by Ruebens, for the
purpose of defining a plurality of pockets to hold numerous articles. Because
this is a case where the improvement is no more than the predictable use of
prior art elements according to their established functions, no further analysis
is required by the Examiner. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396.

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