Appeal No. 2004-0436
Application 09/746,251
The examiner responds that segmented star wheel 43 has eight pockets and the desire to
convey more than eight bottles “would require at least a three piece star wheel so that there are
partial pockets on each piece” such that adjacent pieces will form a pocket (answer, page 2). The
examiner further contends that segmented star wheel 43 has “a central hub portion and an outer
annular portion with releasable fastener means for connecting” the two carrier segments as
required by appealed claim 1 (id., page 3).
A reference can provide the suggestion or motivation to one of ordinary skill in the art to
modify the teachings thereof, either expressly or by inference. See B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference. [Citation omitted.] This suggestion or
motivation need not be expressly stated. [Citation omitted.]”). In this respect, 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 in the marked up sheet of drawings of Kantor attached to the first Office
action (Paper No. 5) (see above note 1), the examiner identifies the structures of segmented star
wheel 43 in Kantor Fig. 1 that correspond to the limitations in appealed claim 1 which are argued
by appellant in the brief without reference to this disclosure of Kantor. On this record, we
conclude that one of ordinary skill in this art would have reasonably inferred the meaning of each
of the features of the drawing that the examiner ascribes thereto, even thought the same is not
expressly set forth in Kantor. Therefore, we agree with the examiner that the difference between
the claimed apparatus comprising at least a star wheel carrier assembly as defined in appealed
claim 1 and segmented star wheel 43 is the number of identical carrier segments, and thus, the
dispositive issue in this appeal is whether the disclosure of star wheel 43 in Kantor Fig. 1 alone
wheel 43 to accommodate machine direction (page 2, left column, lines 23-32).
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