Appeal No. 2003-1599
Application 09/494,028
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 Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). In these respects, it is well settled that a
reference stands for all of the specific teachings thereof as well as the inferences one of ordinary
skill in this art would have reasonably been expected to draw therefrom, see In re Fritch, 972
F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of this person. In re Sovish,
769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
We find that the examiner admits that cap panel insert member 20, which is bordered by
cap panel inserts 40 and 42 of central panel 16 and by upper and lower puffing portions 30 and
32 of framing 18 of the dish assembly of cut top casket 10 as shown in Figs. 1 through 8 and
described in Winburn (cols. 2-3), does not substantially completely fill the dish assembly of that
cut top casket as required by the appealed claims here considered (answer, pages 5-6). Thus, the
examiner contends that panel member 20 “is ‘capable of’ being sized and configured to
substantially completely fill a dish assembly of a cut top casket” (id.). Appellants point out that
there is no basis in Winburn which factually supports the examiner’s position and thus, the
reference neither teaches nor provides motivation to arrive at a dish assembly encompassed by
the rejected claims (brief, pages 7-8; reply brief, pages 1-3).
We again agree with appellants. It is not apparent on this record that one skilled in this
art and/or one of ordinary skill in this art would have reasonably inferred from the figures and
disclosure of Winburn with respect to the three panel arrangement for the cut top casket, that the
size of panel 20 could be increased to substantially completely fill the dish assembly of cut top
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