Appeal 2005-2349
Application 09/961,126
device alone is not patentable, it is the combination of the claim that is
patentable (Br. 11).
However, we agree with the Examiner’s response to these arguments
(Answer 15). We also note that the sprayer of Miller is configured to apply
material only to the crests as shown in Figure 9 and discussed in column 7,
lines 50-58. Furthermore, Westphal is directed specifically to the
application of coating material to the crests of a corrugated material,
something that is desired in the process of Wallick. Therefore, one of
ordinary skill in the art would have recognized that the sprayer of Westphal,
which is able to apply a liquid coating only on the crests, would be useful to
accomplish this same function disclosed in Wallick.
Appellant further argues that what is novel and unobvious is “the
provision of water in a corrugated paperboard manufacturing process onto
the tips of the flutes of the corrugated board prior to the application of a
starch slurry onto those same flutes.” (Br. 11). But, as we explained above,
it is the structure of the apparatus that must be differentiated from the
structure of the prior art apparatus. The question is not whether the prior art
teaches applying water, it is whether there is a suggestion to use an
apparatus having the structure required by the claim.
Appellant further argues that the references fail to identify the
problems inherent in the prior art much less identify the solution identified
by the application (Br. 12). But, as long as there is some reason, suggestion,
or motivation in the prior art for making the combination, the problems
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