Appeal No. 2000-0522
Application No. 08/934,826
range was not arbitrary but, rather, was discovered to solve a stated problem (making a package
capable of remaining open by itself). In making the rejection, the examiner has not provided any
showing of a suggestion or motivation to modify the reference as proposed to arrive at the claimed
invention.
The examiner's reliance on In re Rau, 253 F.2d 437, 117 USPQ 215 (CCPA 1958) on page 5
of the answer for the proposition that a patent cannot be granted for an applicant's discovery of a result
which would flow logically from the teaching of the prior art does not save the examiner's rejection,
because, in this instance, the examiner has adduced no evidence in support of the rejection showing that
the claimed ratio, from which the discovered advantage would presumably flow, would have been
obvious to one of ordinary skill in the art.
In light of the foregoing, we shall not sustain the examiner's rejection of independent claims 1
and 4, or claims 2, 3, 5 and 6 which depend therefrom.
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