Appeal No. 1996-3198 Page 7
Application No. 08/371,642
alleged solution thereof. Clearly, the discovery of any
problem with impact on the hands of users of the prior art
hand-held labelers would have been manifest to one of ordinary
skill in the art upon such use. See In re Ludwig, 353 F.2d
241,243, 147 USPQ 420, 421 (CCPA 1965); In re Goodman, 339 F.2d
228, 232-33, 144 USPQ 30, 33-34 (CCPA 1964). Thus, one of
ordinary skill in the art would have been led to use an
elastomeric cover with a desired hardness on the prior art
labelers with a reasonable expectation of reducing the impact.
See also In re Huang, 100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir.
1996). In any event, for the reasons expressed in the answer
and above, a skilled artisan would have been motivated to
modify the labeler of Hamisch to include a cover material as
claimed to obtain a better grip thereon in light of the
combined teachings of the references. The fact that the reason
or motivation to modify Hamisch's labeler advanced by the
examiner may be for providing a better grip rather than solving
a problem with reducing impact on the hands of a user of the
device does not detract from the combinableness of the
references or suggest impermissible hindsight reasoning as
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