Appeal No. 2001-0344
Application 08/900,254
which claims guiding the fibrous web, unheated, through heated calender rolls, and thus
claim 4 falls with claim 1.
The Examiner has stated that “one of skill in the art would have chosen one from
among limited effective known methods of calendering the fibrous web” (Examiner’s
Answer, page 7, lines 12-13). The Appellant has stated that “[t]he Examiner has failed
to demonstrate where in any of the prior art these features may be found ….
Yamamoto, alone or in combination with the other references, does not suggest the
limitations in claims 2 or 3.” (Appeal Brief, page 5, lines 22-26).
The question under 35 U.S.C. § 103(a) is not merely what the references
expressly teach, but what they would have suggested to one of ordinary skill in the art at
the time the invention was made. See Merck & Co., Inc. Biocraft Laboratories, Inc., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). A conclusion of obviousness may be made from
common knowledge and common sense of the person of ordinary skill in the art without
any specific hint or suggestion in the particular reference. See In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Further, in an obviousness assessment,
skill is presumed on the part of the artisan rather than lack thereof. In re Sovish, 769
F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
The Examiner has stated that one of skill in the art would have readily recognized
and appreciated that in order to activate the undrawn fibers, the web must be heated.
The Examiner has also stated that it was well within the purview of choice in the art from
known effective methods to select one of the three alternative methods, thus meeting
the burden of establishing the prima facie case of obviousness. The test for an implicit
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