Appeal 2007-1925
Application 09/391,869
and Dick, we have found that (1) each of the claimed elements is found within the
scope and content of the prior art; (2) one of ordinary skill in the art could have
combined the elements as claimed by methods known at the time the invention was
made; and (3) one of ordinary skill in the art would have recognized at the time the
invention was made that the capabilities or functions of the combination were
predictable. Furthermore, neither Appellant’s Specification nor Appellant’s
arguments present any evidence that cutting the folded edge of Wyant and gluing
the resulting separate pocket sheet and base sheet along the cut edge to form a
continuous two-ply seam as taught by Dick was uniquely challenging or difficult
for one of ordinary skill in the art. The substitution of the continuous, two-ply
seam of Dick for the folded seam of Wyant thus is no more than “the simple
substitution of one known element for another or the mere application of a known
technique to a piece of prior art ready for improvement.” KSR, 127 S.Ct. at 1740,
82 USPQ2d at 1396. Therefore, it would have been obvious at the time the
invention was made to modify Wyant's pocket insert to attach a separate pocket
sheet to a base sheet to form a pocket insert with continuous two-ply seams as
taught by Dick.
This conclusion is consistent with the line of case from the Federal Circuit
and its predecessor court. See, e.g., In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7,
8-9 (CCPA 1975) (holding that the claimed manner in which an electrical contact
was made, i.e. by “metallic wrapping,” that provided no novel or unexpected result
over the metallic connections used in the applied references was an obvious choice
within the skill of the art) (cited with approval in In re Chu, 66 F.3d 292, 299, 36
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