Appeal No. 2006-1403
Application No. 10/011,665
combine references: the nature of the problem to be solved, the
teachings of the prior art and the knowledge of a person of
ordinary skill in the art. In re Rouffet, 149 F.3d 1350, 1357,
47 USPQ2d 1453, 1457-58 (Fed. Cir. 1998). The Examiner has
stated in his final rejection that Teed teaches heating so that
the longitudinal cutting proceeds more smoothly. (Final Office
action, page 2). Moreover, in the Examiner’s answer, he refers
to Teed, column 1, lines 20-21 and column 3, lines 55-57 as
motivation for combining Teed’s heater with Lochkovic’s
separating tool. An examination of those cited portions and the
surrounding text reveals that Teed recognizes that, prior to his
invention of using a heater with a cutter assembly, the cut
tended to vary and be erratic. The cut edges were not clean due
to a characteristic crushing/cutting action of the blade.
(Teed, column 1, lines 20-27). Moreover, Teed recognizes and
teaches that using a heater in combination with the cutting
device is the most important part of his invention in order to
achieve a true cut having the sought after clean edge. (Teed,
column 3, lines 43-47, 55-58). Contrary to Appellants’ argument
that the Examiner has failed to provide any objective evidence
of motivation, we find the Examiner, in fact, has provided
motivation directly from the prior art as to why one of ordinary
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