Appeal No. 2006-0130
Application 10/161,166
web” and “there is no information in Clancy to suggest that the folding process used would
produce a different result . . . even though the fold is creased between feed roller 16 and idler
roller 18” (id., pages 2-3)
It is well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill
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 appellants’ 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 Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
We determine that the broadest reasonable interpretation of the claim terms “weakening”
and “weakened lines” in the context of the specification, including the drawings, as interpreted
by one of ordinary skill in this art, is that the “weakening” requires a modification of the web
material which in fact weakens it to any extent while permitting the panels and sheets to remain
attached “by a weakened line.” See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989). Thus, the burden is with the examiner to establish by scientific
explanation and/or evidence that Clancy would have reasonably disclosed to one of ordinary in
this art that the creasing of the towelette web 10 through longitudinal folding funnel 11 would
inherently result in a single towelette 27,42 as shown in Clancy FIGs, 1, and 3-5 (e.g., col. 1, l.
41, to col. 3, l. 16) that is weakened along the creased, longitudinal fold lines.3 The examiner’s
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
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