Appeal No. 2001-0079
Application No. 09/092,702
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992).
It is our view that, while a showing of proper motivation
does not require that a combination of prior art teachings be
made for the same reason as Appellants to achieve the claimed
invention, we can find no motivation for the skilled artisan to
apply the heat shrink label seal of Muscala to the liquid
dispenser of Gross. As pointed out by Appellants (Brief, page
8), Muscala is directed to a cap and bottle seal which must be
removed in order to access the contents. We fail to see how the
cap and bottle seal disclosure of Muscala would have any
relevance to the liquid dispensing device structure of Gross.
There is nothing in the disclosure of Gross to indicate that
security considerations and ease of seal removal, the problems
addressed by Muscala, were ever a concern. It is our opinion
that the only basis for applying the teachings of Muscala to the
liquid dispenser device structure of Gross comes from an improper
attempt to reconstruct Appellants’ invention in hindsight.
Accordingly, since the Examiner has not established a prima facie
case of obviousness, the rejection of independent claims 8 and
20 over the combination of Gross and Muscala is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 9, 10, 21, and 22 based on the
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007