Appeal No. 96-0501
Application 08/101,499
It would have been obvious to one having
ordinary skill in the art at the time the
invention was made to select a biodegradable
plastic enclosure, since it has been held to be
within the general skill of a worker in the art
to select a known material on the basis of its
suitability for the intended use as a matter of
obvious design choice and due to environmental
concerns it would have been obvious to select a
biodegradable enclosure material. In re
Leshin, [277 F.2d 197, 199,]125 USPQ 416 [,417-
18 (CCPA 1960).]
Alternatively, the examiner states (id.):
Boeri or Starcevich teaches the use of water
soluble and biodegradable materials for filler
material. It would have been obvious to use
water soluble and biodegradable materials for
filler material as taught by Boeri or
Starcevich for the filler material in the
package of Bauman ‘521 as modified above to
allow easy disposal of the packaging contents
without damage to the environment.
Appellant contends in both the brief and reply brief that
neither Bauman nor Wright teaches or suggests that both the
enclosure and fill material be made of water soluble
biodegradable material, and that neither Boeri or Starcevich
suggests using biodegradable fill materials in combination with a
biodegradable and/or water soluble enclosure. Appellant asserts
that the examiner is engaging in impermissible hindsight
reconstruction of his invention.
We note initially that claim 8 recites an enclosure “having
a conformable external surface which engages the article and a
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