Appeal No. 2006-0111
Application 09/900,746
9 travels at a specific speed but this speed is not disclosed
(Certificate of Correction, pages 11-12; see Figure 7). As
correctly argued by the examiner, the optimum speed of the web
material would be based on several factors and would have been well
within the ordinary skill in this art (Answer, page 11). See In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990)(the law is replete with cases where the difference between the
claimed invention and the prior art is some variable within the
claims; consistently held that applicant must show the criticality
for such a variable). Appellants have not argued that the claimed
web speed is critical, much less submitted any evidence of
criticality for the claimed web speed.
For the foregoing reasons, we determine that the examiner has
established a prima facie case of obviousness in view of the
reference evidence. Based on the totality of the record, including
due consideration of appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of section 103(a). Therefore we
affirm the examiner’s rejection of claims 1-7, 9-19 and 21-30 under
section 103(a) over Deacon.
With regard to the rejection of claim 20 under section 103(a)
over Deacon in view of Win (Answer, page 9), the examiner applies
11
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