Appeal No. 2003-1592
Application 09/492,032
memorabilia drawer in the casket of Biondo as suggested by Shanks ‘941 and/or Lee, in the
reasonable expectation of sealing and/or locking the memorabilia drawer. See 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 re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill in the
art.”).
Accordingly, since a prima facie case of obviousness has been established over the
combined teachings of Biondo and Estes, Shanks ‘941, Saaf and/or Lee as applied with respect
to appealed claims 1, 28, 30, 43, 44, 46 and 47, we have again evaluated all of the evidence of
obviousness and nonobviousness based on the record as a whole, giving due consideration to the
weight of appellants’ arguments in the brief and reply brief. See generally, Oetiker, supra; In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellants present essentially the same argument with respect to the application of
Shanks ‘941 and/or Lee, that is, these references cannot be combined with Biondo, either alone
or as combined with Estes and/or Saaf, because both Shanks ‘941 and Lee are directed to
drawers in articles of manufacture that are not caskets containing memorabilia drawers, and thus,
these references are not related to the claimed invention (brief, e.g., pages 8-9, 10-11 and 14-15;
reply brief, e.g., pages 1-3 and 6-7).
We determine that because there is no factual basis to conclude, and the examiner does
not contend, that Shanks ‘941 and Lee are within the field of appellants’ endeavor, the issue
raised by appellants is whether the subject matter and the problems addressed by Shanks ‘941
and by Lee are reasonably similar to each other and to the problems addressed by the claimed
memorabilia drawer containing casket that the references in fact constitute analogous prior art
that would have been considered by one of ordinary skill in this art. We find that both Shanks
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