Appeal 2007-0061
Application 09/531,978
filler from the base film 1 of Nagura based on the teachings of Nagura and
the knowledge of one of ordinary skill in the art?
We answer yes. Nagura describes including 10-40 wt.% filler and
states that if the content of the filler is less than 10 wt.%, white and opaque
films cannot be obtained (Nagura, p. 4, ll. 1-5). When the white and opaque
property were not desired, one of ordinary skill in the art would have
eliminated the filler. As stated in In re Larson, 340 F.2d 965, 969, 144
USPQ 347, 350 (CCPA 1965), “[i]f this additional feature is not desired, it
would seem a matter of obvious choice to eliminate it and the function it
serves.”
With respect to the rejection of claim 82, Appellants further contend
that the Examiner has not provided a suggestion in the reference to prepare
the product by simultaneous biaxial orientation as claimed (Br. 17).
However, we note that the claim is directed to a product. As such, it is the
patentability of the product defined by the claim, rather than the process for
making it that we must gauge in light of the prior art. In re Wertheim,
541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976); In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). Whether the multilayer film is
oriented simultaneously or sequentially, it is reasonable to conclude the
result is the same with regard to the end product structure. A suggestion in
the prior art, much less a suggestion in the reference itself, is not required to
support the Examiner’s determination of obviousness with regard to
claim 82.
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