Appeal No. 1999-0509
Application No. 08/693,585
presumed, not the converse. In re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed.
Cir. 1985). For these additional reasons, we will sustain the ' 103 rejection of claim 35.
In sustaining the rejections of claim 35 under ' 102(b) and ' 103, we are not
unmindful of appellants= arguments on pages 9-12 of the main brief. These arguments,
however, are not persuasive.
Contrary to appellants= contention on page 9 of the main brief, Dickey=s elliptical
container body does have a convex outer surface that responds to appellants= claimed
convex surface as discussed supra. Also, step Ab@ of claim 35 is met by Dickey for the
reasons discussed supra.
In reaching our conclusion that claim 35 is unpatentable, we have given weight to
the preamble of the claim. However, we have found that the preamble, which defines the
particular configuration of the claimed article, does not distinguish from Dickey. There
is substantial evidence to support this finding as discussed supra.
Finally, for the reasons set forth supra, we disagree with appellants= argument on
page 11 of the main brief that Dickey=s teachings relating to the illustrated embodiments
do not apply to the unillustrated embodiment having the elliptically contoured container
body. With particular regard to the ' 103 rejection, an express disclosure or suggestion
of applying Dickey=s label wrapping method to the unillustrated embodiments is not
required to meet the test for obviousness. See In re Sernaker, 702 F.2d 989, 994, 217
USPQ 1, 7 (Fed. Cir. 1983). Instead, the suggestion may be implied. Id. Moreover, an
applied reference must be evaluated for the reasonable inferences that one skilled in the
art would have drawn from the reference, not just the specific disclosures in the
reference. In re Shepard, 319 F.2d 194, 197, 138 USPQ 148, 150 (CCPA 1963). In the
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007