Appeal No. 2003-0957 Page 8
Application No. 09/074,074
literature is less significant and not deserving of inclusion in the envelope if the inclusion
significantly increases the weight of the envelope and thus incurs additional postage."
Col. 1, l. 67 - col. 2, l. 6. In summary, Baggarly assigns priorities to inserts and
excludes lower priority inserts based on their weight. We agree with the appellants that
"Baggarly does not disclose . . . or suggest any features of [a] billing statement itself.
Furthermore, Baggarly does not describe a billing statement template." (Appeal Br. at
5.)
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “This factual
question . . . [cannot] be resolved on subjective belief and unknown authority.” In re
Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be
based on objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
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