Appeal No. 2002-1222
Application 09/049,908
different elements thereof. Thus, we decide this appeal based on appealed independent claims 1
and 25 for the first ground of rejection; appealed claims 3 and 29 for the second ground of
rejection; and appealed claims 5 and 7 for the third and fourth grounds of rejection respectively.
See 37 CFR § 1.192(c)(7) (2001), which provides in pertinent part “[m]erely pointing out
differences in what the claims cover is not an argument as to why the claims are separately
patentable.”
We affirm the first and second grounds of rejection with respect to appealed independent
claim 25 and appealed claims 26 through 34 dependent thereon, and reverse all other grounds of
rejection.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
We first consider the grounds of rejection of appealed claims 1, 3, 5 and 7. In order to
establish a prima facie case of obviousness, the examiner must show that some objective
teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge
generally available to one of ordinary skill in this art would have led that person to the claimed
invention as a whole, including each and every limitation of the claims arranged as required by
the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re
Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996);
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow
Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The plain language of appealed independent claim 1, on which appealed claims 3, 5 and 7
directly or ultimately depend, requires an unwind stand comprising at least a pair of spaced apart
arms which engage the core of a parent roll, and a core placement table adapted to receive the
partially unwound parent roll core from the arms prior to the bonding of the web from a second
parent roll to the web of the first parent roll while the first parent roll is still unwinding while
rotatably supported on the core placement table at the time of bonding. The examiner correctly
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