Appeal No. 2000-1789 Page 13
Application No. 08/699,572
contacted by Giacovas' water glue not Giacovas' adhesive which contacts only the
cover strip and the tape.2
For the reasons set forth above, the subject matter of claim 1 is not suggested
by the combined teachings of the applied prior art. Accordingly, the decision of the
examiner to reject claim 1, and claims 4 to 15, 17 and 18 dependent thereon, under
35 U.S.C. § 103 is reversed.3
Turning now to claim 16, the appellant argues (brief, pages 24-25) that appellant
identified the problem (i.e., difficulty in separating stored blanks) and solved it with
structure not found in either Kaplan or Giacovas. The appellant then admits that "[i]f
one puts Giacovas's tape on Kaplan's carton blank, the problem is solved." The
appellant asserts (brief, pages 24-25; reply brief, page 3) that with no recognition of the
problem, there is no suggestion, teaching or motivation to combine the teachings of
Kaplan and Giacovas absent the use of impermissible hindsight.
2 The examiner also did not respond to this argument of the appellant in the answer.
3 We have also reviewed the reference to Sogi additionally applied in the rejection of claim 8
(dependent on claim 1) but find nothing therein which makes up for the deficiencies of Kaplan and
Giacovas discussed above regarding claim 1.
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