Appeal No. 2005-2131
Application 10/000,254
PFFC and the combined teachings of Majkrzak, Schumann, Koehlinger, Boreali, Evans, PFFC
and Nedblake would have arrived at the claimed method of and apparatus for enabling a linered
label applicator to accept linerless label sheet for application to the surface of elements
encompassed by appealed claims 1, 6 and 20, respectively, including each and every limitation
thereof arranged as required therein, without recourse to appellants’ disclosure. See In re
Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991) (“The extent to
which such suggestion [to select elements of various teachings in order to form the claimed
invention] must be explicit in, or may be fairly inferred from, the references, is decided on the
facts of each case, in light of the prior art and its relationship to the applicant’s invention.”); 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.”); Keller, 642 F.2d at 425, 208 USPQ at 881; Siebentritt, 372 F.2d 566, 567-68,
152 USPQ 618, 619; see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. . . . There is
always at least a possibility of unexpected results, that would then provide an objective basis for
showing the invention, although apparently obvious, was in law nonobvious. [Citations omitted.]
For obviousness under § 103, all that is required is a reasonable expectation of success.
[Citations omitted.]”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Majkrzak, Schumann,
Koehlinger, Boreali, Evans and PFFC and the combined teachings of Majkrzak, Schumann,
Koehlinger, Boreali, Evans, PFFC and Nedblake with appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1 through 4, 6 through 10 and 18 through 20 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
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