Appeal No. 2005-1180
Application No. 09/791,298
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus, Peiker and Cramer must
not be read in isolation but rather must be considered for what their combined teachings would
have fairly suggested to one of ordinary skill in the art. See Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380, 74 USPQ2d 1823, 1830 (Fed. Cir. 2005) (a prior art reference that
does not specifically refer to one element of a combination does not, per se, teach away).
In this case, the examiner recognizes that Peiker discloses a tray with holes in a top wall.
See circular openings 32 in Figure 1. However, the examiner relies on the teachings of Cramer
to establish that perforated aperture areas were commonly used in meal cartons instead of holes
and can be pushed through the top wall of the tray "as needed" to preserve the strength of the
tray. See col. 2, lines 21-24. The examiner concludes that one of ordinary skill in the art would
have been motivated to modify the holes in the tray of Peiker with the perforated aperture areas
in Cramer to preserve the strength of the tray in Peiker.
Appellants argue that the suggestion or motivation to modify the tray of Peiker is
without foundation or support in the prior art. See Brief, p. 17. To the extent that the
suggestion or motivation set forth by the examiner is not expressly stated in Cramer, the
suggestion to make the proposed modification is reasonably within the knowledge of one of
ordinary skill in the art. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed.
Cir. 2000) (suggestion to modify may come explicitly from statements in the art, the knowledge
of one of ordinary skill in the art or may be implicit from the prior art as a whole). Appellants
have failed to present any evidence to the contrary. See In re Schulze, 346 F.2d 600, 602, 145
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