Appeal No. 2004-0027 Page 7
Application No. 09/513,089
With regard to Appellants’ argument that “it is improper for the Examiner to rely on the
disclosure of ‘flame-lamination’ techniques in the present specification as an ‘admission.’”
(Brief, p. 7), we need not decide whether there was an error here. That is because the Examiner
has furnished other evidence showing that the flame lamination process of claim 5 was known,
namely, the disclosures of Richter and Dickey. Suffice it to say that admitted prior art in an
applicant's specification may be used in determining the patentability of a claimed invention, In
re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975), and the discussion in
Appellants’ specification at page 2, lines 10-31 appears to be a discussion of prior art.2
Appellants do not provide any reason to believe otherwise.
Nor can we agree with Appellants’ argument with respect to Richter (Brief, pp. 6-7).
Appellants improperly straitjacket the teachings of the references and do not adequately consider
the more appropriate question of what those references would have suggested to one of ordinary
skill in the art. See In re Dow Chem., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988)(“The consistent criterion for determination of obviousness is whether the prior art would
have suggested to one of ordinary skill in the art that this process should be carried out and
would have a reasonable likelihood of success, viewed in the light of the prior art.”); 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
2Codos and King, the references added to reject claim 6, provide further evidence that the particulars of the
flame lamination process discussed in the Background of Invention were prior art to Appellants.
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