Appeal No. 2005-1484
Application 09/486,875
in this art would have led that person to the claimed invention as a whole, including each and
every limitation of the claims arranged as required by the claims, without recourse to the
teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness
is whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); see also 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.”).
We have carefully considered the record before us and based on our review, find that we
agree with appellant’s argument that neither reference evinces removing a portion of the rear
surface of each of the two plastic extrusions at the miter joint and then “restoring,” in claim 9, or
“rebuilding,” in claim 11, the portion of each of the extrusions that was removed (brief,
unnumbered page 4).
We are mindful that in this respect, the examiner finds that “[t]o rebuild the removed
portion, Eagles inserts element 24 into the void left by the removed portion” and that “Mathellier
shows that it is known to carry out a method of rebuilding a removed back corner of an
extrusion” (answer, pages 4-5). However, we find that in Eagles Fig. 4, after the mitered gasket
sections from which a portion of base 20 and retaining portion 21 have been removed and a piece
of uncured or vulcanizable rubber 26 has been inserted therebetween in mold female part 23,
L-shaped mold male part 24 is inserted into such areas of the mitered gaskets for the purpose of
3 The examiner states that the ground of rejection is set forth in the Office action mailed
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