Appeal No. 2005-0381 Page 8
Application No. 09/841,380
Claim 59 (Group VIII)
Group I, Claims 33-35, 51, 52, 54, 56, and 57
To represent the issues on appeal with regard to Group I, we select claim 33. As we
explained above, claim 33 is anticipated by Hess. Needless to say, contrary to the arguments of
Appellants (Brief, pp. 19-22) , there are no deficiencies in Hess to cure. We also note that, as
found by the Examiner, Hess specifically states that “it is also feasible for the coating medium to
be applied to the surface of a transfer roll which then transfers the coating layer to the material
web.” (Answer, p. 3 citing Hess, col. 6, ll. 42-48). The differences between the Hess process
and the Nakajima process discussed by Appellants are unconvincing in light of the evidence as a
whole and the express suggestion in Hess of using a transfer roll configuration. See EWP Corp.
v. Reliance Universal, Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474
U.S. 843 (1985)(“On the issue of obviousness, the combined teachings of the prior art as a whole
must be considered.” (emphasis added)); 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.”); In re Bascom, 43 CCPA 837, 230 F.2d 612, 614, 109 USPQ 98, 100 (1956)(“[T]he proper
inquiry should not be limited to the specific structure shown by the references, but should be into
the concepts fairly contained therein, and the overriding question to be determined is whether
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