Appeal No. 95-4014
Application 08/128,929
as specified by claim 53. Indeed, the examiner has merely alleged that “[o]ne skilled in the art would
have known to fold two small strips on opposite edges of the stacks, to reduce the amount of tape
required by the process” without any evidence or scientific reasoning why this would be so. See In re
Horn, 203 USPQ 969, 971 (CCPA 1979) (“[S]implicity and hindsight are not proper criteria for
resolving the issue of obviousness.”). We find nothing in the remaining references which would cure this
deficiency in the combination of Doery and Ito et al. which is basic to each of the examiner’s ground of
rejection. Accordingly, it is inescapable that the combined references applied by the examiner taken as
a whole would not have resulted in the claimed methods. See In re Laskowski, 871 F.2d 115, 10
USPQ2d 1397 (Fed. Cir. 1989); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5
USPQ2d 1434, 1438-41 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); cf. In re Gorman, 933
F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Thus, it is manifest that the only direction to appellant’s
claimed invention as a whole on the record before us is supplied by appellant’s own specification.
The examiner’s decision is reversed.
Reversed
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
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