Appeal No. 2000-1202 Page 6
Application No. 08/982616
The Rejection Under 35 U.S.C. § 103
4
Independent claims 5, 8 and 9 stand rejected as being obvious in view of the
combined teachings of Fluent and Doman, the latter being cited for its disclosure of using
arm means for folding boxes. Claims 5 and 8 require that the box folding section be
“adjacent” the panel receiving section, and claim 9 that it be “sidewardly adjacent” thereto.
All three of these claims also recite that the box folding section includes means acting
upon box blanks. For the reasons explained above, Fluent actually teaches away from
such arrangements. Doman is concerned with closing the top flaps of a corrugated
container that has previously been erected and filled with goods, and which has arrived at
the machine from “a previous operating station” (column 3, lines 35 and 36). While
Doman does teach folding the flaps of the box into the closed position by means of arms, it
certainly does not provide teachings that would cure the deficiencies in Fluent that are
discussed above. Moreover, from our perspective, no other evidence is before us which
4The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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