Appeal No. 2004-1854
Application No. 08/971,851
teachings of cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.
[Citations omitted].” In re Mercier. 515 F.2d 1161, 1165, 185 USPQ
774, 778 (CCPA 1975).
Appellants argue that, contrary to the examiner’s position, JP
‘916 does not contain any suggestion that the direction of the
grooves 1a can or should be altered (Brief, page 11). Appellants
argue that the teaching in JP ‘916 that “[a]s long as said effect
is obtained, any shape, any number, and any arrangement means can
be used for the grooves” refers to the process by which the score
lines are arranged on the sheet material, rather than their
orientation (Brief, page 11; Reply Brief, page 3).
Appellants’ arguments are not persuasive. Although the
disclosure of JP ‘916 does follow the above quoted “arrangement
means” with examples of different shapes of grooves (translation,
page 4, ll. 1-3), we again note that a reference is not limited to
its examples (id. at line 1, “[f]or example”). See In re Widmer,
supra. We agree with the examiner that it would have been
reasonable to one of ordinary skill in this art, based on the prior
art as a whole, to employ the grooves of JP ‘916 in any direction
with a reasonable expectation of success, namely to reduce the
excessive occurrence of compressive pressure on the pollution
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