Appeal No. 2005-1476 Page 5
Application No. 10/174,555
wall 18 of the primary receptacle or wastebasket 12 in the same manner that the
adhesive connects the rear wall of the appellant’s container to a side wall of the
receptacle and thus is not an equivalent of the appellant’s adhesive connection. We
therefore agree with the appellant that Waterston fails to meet the “means connecting
...” limitation. Clark, which is applied by the examiner merely for a suggestion to provide
a trash bag in the Waterston wastebasket1, provides no cure for that which is lacking in
Waterston. Accordingly, the rejection of claim 1 as being unpatentable over Waterston
in view of Clark is reversed.
The rejection of claims 1, 4 and 8 as being unpatentable over Waterston in view
of Clark, Sharkey and Beasley is also reversed. We find no suggestion in either
Beasley or Sharkey to replace the hanger member of Waterston with either a hook and
loop or adhesive fastener on the walls of the primary and secondary receptacles. As
stated by our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of
1 The application of Clark appears to us to be superfluous, inasmuch as claim 1 does not
positively recite a trash bag.
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