Appeal No. 1997-2956 Page 7
Application No. 08/511,288
The appellants argue (brief, pp. 6-9) that the applied
prior art does not suggest the claimed subject matter. We
agree. In that regard, we agree with the appellants that the
teachings of Worden would not have made it obvious at the time
the invention was made to a person having ordinary skill in
the art to use a laminate material as the backing sheet in the
nappy-pants of De Jonckheere. Moreover, the examiner's
determination (answer, p. 4) that it would have been obvious
to an artisan to slit and reassemble any of the layers (i.e.,
the backing layer or the cover layer) used to make the nappy-
pants of De Jonckheere has not been supported by any
evidence. 1
1Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Importers Int'l., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
(continued...)
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