Appeal No. 2004-0996
Application No. 09/520,947
method of Morris to include the step of inserting the loaf of
bread into the bag of McEachen while heat shrinking this inner bag
to seal the bread to maintain freshness (Paper No. 8, pages 3-4).
We disagree.
“When relying on numerous references or a modification of prior
art, it is incumbent upon the examiner to identify some suggestion
to combine references or make the modification. [Citations
omitted].” In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454
(Fed. Cir. 1997). “It is insufficient to establish obviousness
that the separate elements of the invention existed in the prior
art, absent some teaching or suggestion, in the prior art, to
combine the elements.” Arkie Lures, Inc. v. Gene Larew Tackle,
Inc., 119 F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997).
“The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested
the desirability of the modification. [Citations omitted].” In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In view of these tenets of patent law, we determine that the
examiner has not established the obviousness of “substituting” an
inner bag for the inner wrapper of Morris, nor established the
obviousness of heat shrinking the inner bag.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007