Appeal No. 1998-0246
Application No. 08/397,536
part of those practicing in the art. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985). In this instance, the examiner does not contend that one of ordinary skill in
the field of making or packaging wound dressings would have found it obvious to replace the
cut-off rollers 18, 19 of Petersen with the severing technique disclosed by Dallaserra. Rather,
as emphasized by the examiner on page 6 of the answer, the examiner's position is that it
would have been obvious to one of ordinary skill in the art to employ the relative feed
velocities as taught by Dallaserra to achieve spacing.
The Schmeichel declaration points out on page 5 that Dallaserra does not provide the
ability to inspect the location of the insert relative to where sealing would take place and that
utilizing the Dallaserra method to even try and package differing sized inserts in the same
package size would be extremely complicated. These statements, however, are not commensurate
in scope with the appellant's claims, which require neither inspection, or capability of inspection, of
the location of the insert relative to where sealing would take place nor packaging of different
sized inserts in the same package size. It is well settled that evidence of nonobviousness must be
commensurate in scope with the claims to which it pertains. In re Clemens, 622 F.2d 1029, 1035, 206
USPQ 289, 296 (CCPA 1980); In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA
1979) and In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971). See also In re
Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983). Moreover, with particular
regard to inspection, it appears that the use of transparent regenerated cellulose (cellophane)
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