Appeal No. 1996-1945
Application No. 07/960,421
environmentally hazardous pollutants. It is the position of the Examiner
that applicants claimed structure having end walls and four side walls, and
the overlapping contacting relationship of the margins for welding is an
obvious structural change that would have been obvious to one having
ordinary skill in the art as this is tantamount to a change of shape from a
bag to a box. (Examiner’s Answer, paragraph bridging pages 3 and 4).
The Examiner appears to have applied a per se obviousness standard. However,
there is no per se test for obviousness. In re Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d
1127, 1133 (Fed. Cir. 1995). The question is not whether the modification could be
made to change the shape from a bag to a box, but rather “whether it was obvious to do
so in light of all the relevant factors.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc.,
119 F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997). “The mere fact that the
prior art could be so modified would not have made the modification obvious unless the
prior art suggested the desirability of the modification.” In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re Laskowski, 871 F.2d 115, 117, 10
USPQ2d 1397, 1398 (Fed. Cir. 1989). The Examiner has not provided any reason for
modifying the structure of Moretti to arrive at the claimed invention. The package of
Moretti is in the form of a bag, which does not include metal sidewalls and metal end
walls. The Examiner asserts making a box out of a bag is “a very simple maneuver, not
involving an inventive step.” (Examiner’s Answer, page 4, lines 18-19). The Examiner
does not specifically indicate why one of ordinary skill in the art, based on the
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