Appeal No. 2000-2045 Page 6
Application No. 09/206,253
utilizing an encompassing tamper-evident label for medical containers; if it did, the
rejection would be one of anticipation. Cornish was applied by the examiner for teaching
wrapping a tamper-indicating label completely around a package for advantages which
one of ordinary skill in the art would have recognized. The fact that the appellants
recognized other advantages that flow naturally from following the suggestion of the prior
art cannot be the basis for patentability when the claimed subject matter otherwise would
have been obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985).
Further with regard to this argument, it is interesting to note that Cornish teaches that
although the label “typically” completely encircles the package, such is not necessary
(column 2, lines 30-32), which teaches one of ordinary skill in the art that either system can
be used, depending upon other factors worthy of consideration, such as how much of the
package is desired to be protected against tampering and the techniques desired to be
used for installation of the label. Finally, we are unable to appreciate the relevance with
regard to claim 15 of the argument on page 6 of the Brief regarding the “location of [the]
label in a particular place,” for such a limitation does not appear in this claim.
With regard to the allegation that Cornish is nonanalogous art (Reply Brief, page 2),
the test for analogous art is first whether the art is within the field of the inventor's endeavor
and, if not, whether it is reasonably pertinent to the problem with which the inventor was
involved (see In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979)), and
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