Appeal No. 1996-1897
Application 08/064,145
the references. Rather, the test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.”).
Accordingly, since the examiner has established a prima facie case of obviousness, we have
again evaluated all of the evidence of obviousness and nonobviousness based on the record as a whole,
giving due consideration to the weight of appellants’ arguments. See generally In re Johnson, 747
F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments. While appellants contend that the
claimed plastic enclosure overcomes a number of disadvantages they find in the metal enclosure of
Mushardt (brief, pages 5-6), we find that these disadvantages are the same or similar disadvantages
taught by Wendt to be overcome through the use of the plastic material containing a reinforcing filler in
place of metal to form the enclosure (e.g., page 1, line 6, to page 2, line 39). Furthermore, we cannot
agree with appellants that the enclosures of Mushardt and Wendt can be characterized as “massive
blocks” (brief, pages 5-7). As we set forth above, we find from the Mushardt FIGS. that the enclosure
entirely surrounds the irregularly contoured twin-blade workpiece only in the “integral” structures
formed by the “walls” and the “ribs or webs” which we view as a “rib” that one of ordinary skill in this
art would reasonably find to provide a “chucking surface” for processing “segments 3 and 4”
(Mushardt, page 4, lines 74-79). Thus, the “integral” structures are “ribs” as this term is used by
appellants in their specification and appealed claims and we find no limitation in appellants’ appealed
claims which would preclude such a structure in the claimed enclosures. See In re Self, 671 F.2d
1344, 1348-49, 213 USPQ 1, 5 (CCPA 1982). In similar manner, we find that the enclosure
exemplified in the Wendt drawing with respect to an irregularly contoured solid metal workpiece differs
from the appealed claims in the presence of one rather than several parallel “ribs connected along a
surface of said metal workpiece through webs” and not in the amount of material used in or the shape
of the plastic enclosure.
Appellants further contend that there is no motivation to combine Mushardt and Wendt because
Wendt “notes that a shape can be formed so as to orient the workpiece, while Appellants’ novel claim
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