Appeal No. 2000-0996
Application 08/836,940
in view of Knaus, and further in view of Todd et al. (Todd); and appealed claim 34 and 36
through 422 under 35 U.S.C. § 103(a) as being unpatentable over Tornero in view of Kohama and
optionally in view of Knaus, and further in view of Thevenet et al. (Thevenet).3
As appellant points out (brief, e.g., pages 10-11), the plain language of appealed claim 21,
on which all of the appealed claims depend, requires “said panel and backing web are flat before
said thermoforming and have surfaces that lay together flat before said thermoforming,” and
“feeding compressed air into a closed cavity over said panel,” none of which is taught by
Tornero. Thus, the issue is whether one of ordinary skill in this art would have combined
Tornero with the teachings of Kohama and Knaus, on the basis the combination would have
suggested the modification of the vacuum molding process of Tornero by laying and holding the
panel and backing web together flat in the mold and not “naturally loose” such that gaps may
exist between these sheets as taught by Tornero (e.g., col. 4, lines 47-51, and col. 5, lines 21-28
and 57-67) and by applying compressed air by covering the uncovered female mold required by
the process of Tornero (e.g., col. 3, lines 4 and 44).
We have very carefully considered the examiner’s position in the answer and appellant’s
position in the brief. We have no doubt that one of ordinary skill in this art can modify the
vacuum molding process of Tornero as proposed by the examiner. However, that one of ordinary
skill in the art may be capable of doing so does not alone provide the basis for combining the
applied prior art as there must also be some teaching, suggestion or motivation in the combined
prior art to make the modification. See e.g., In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless the prior art suggested
the desirability of the modification.”) Here, we find no specific teaching or inference that one of
ordinary skill in the art would have been expected to reasonably draw from the combined
2 Appealed claims 21 through 34 and 36 through 42 are all of the claims now in the application.
Appellant amended appealed claims 21, 22, 27, 30 through 32 and 36 through 38, and canceled
claims 35, 43 and 44 in the amendment April 2, 1999 (Paper No. 10). Because appealed claim 42
remains dependent on canceled claim 35, the examiner should enter a ground of rejection of
appealed claim 42 as being indefinite under 35 U.S.C. § 112, second paragraph, upon further
prosecution of the appealed claims after disposition of this appeal.
3 Answer, pages 2-13.
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