Appeal No. 1999-0509
Application No. 08/693,585
present case, one skilled in the art would have drawn the inference that the label
wrapping method for Dickey=s embodiment of Figure 2 is also applicable to the
unillustrated elliptically contoured embodiment for the reasons discussed supra.
Additionally, as noted supra, there is an implicit suggestion for applying that label
wrapping method to the elliptically contoured embodiment for the purpose of simplifying
the label wrapping operation.
We will not sustain the ' 103 rejections of method claims 22, 23 and 25-31 and
product claims 32-34. Dickey contains no teaching or suggestion of a container having a
compound curvature as defined in claim 22. This container construction is also
incorporated into product claims 32-34. With regard to the examiner=s position as set
forth on page 4 of the answer, it does not follow from Dickey=s teaching of a variety of
different container configurations that it would have been obvious to apply Dickey=s label
wrapping method to any undisclosed container configuration. Furthermore, the
limitations relating to the container configuration in the preamble of claim 22 cannot be
ignored. In the first place, claim 22 is limited to a method of applying a label to a
particular container configuration. In addition, the material (in this case a container of a
particular shape) on which a process is carried out must be accorded weight in
determining the patentability of that process, See In re Pleuddemann, 910 F.2d 823, 825-
28, 15 USPQ2d 1738, 1740-42 (Fed. Cir. 1990).
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007