Appeal No. 1996-1897
Application 08/064,145
setting (e.g., page 2, lines 60-61 and 119-124, and page 4, lines 1-24); and that such plastic material is
brittle at low temperatures which facilitates the removal of the enclosure from the workpiece without the
necessity for rated break lines or points, such as rated break point 10 in the Mushardt FIGS. discussed
above (see supra p. 8), and thus can be removed by “simple mechanical means” (e.g., page 2, lines
62-69, page 3, lines 9-44, and page 4, lines 48-71).
Accordingly, we find that the combined teachings of Mushardt and Wendt would have
provided one of ordinary skill in this art with the motivation to enclose an irregularly contoured metal
workpiece in a plastic material containing a reinforcing filler, wherein the enclosure is formed by
injection molding in a shape providing parallel chucking surfaces on “ribs connected along a surface of
said metal workpiece through webs” and will shrink to conform to the workpiece, thus facilitating the
manipulation of the workpiece with respect to the chucking surfaces, that is, holding the same in one or
more machine tools in the desired orientation for processing, wherein the enclosure can be removed
from the workpiece by cooling. One of ordinary skill in this art would have had the reasonable
expectation that such an enclosure will have the stability to protect the workpiece from the stress and
strain of processing on machine tools and can be readily removed from the workpiece following
processing. Accordingly, one of ordinary skill in this art following the combined teachings of Mushardt
and Wendt would have reasonably arrived at the claimed invention encompassed by appealed claims
12, 13, 20, 23 and 25 through 29. See e.g., Pro-Mold & Tool Co. v. Great lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to combine
[the references] arose from the very nature of the subject matter involved, the size of the card intended
to be enclosed.”); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir.
1991) (“The extent to which such suggestion [to select elements of various teachings in order to form
the claimed invention] must be explicit in, or may be fairly inferred from, the references, is decided on
the facts of each case, in light of the prior art and its relationship to the applicant’s invention.”); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of
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