Appeal No. 2006-0770 Page 5
Application No. 09/783,366
The appellants argue (first reply brief, p. 6) that Wilson’s description of the backing
material 33 providing a contrasting background for the cap 21 teaches away from the provision
of a picture of a scene on such backing material, as a scene would render the details of the cap
less visible to an observer. This argument is not well founded as it is not apparent, and the
appellants have not cogently explained, why the depiction of a scene behind the cap would
necessarily have such an effect. A contrasting background need not be a solid color to permit the
details of the cap to stand out to an observer.
The appellants also argue (first reply brief, p. 7) that it is not clear how a picture would
be incorporated in the cap display apparatus device of Wilson since the cap itself occupies
almost the entire display. With respect to this argument, we observe that all of the features of the
secondary reference need not be bodily incorporated into the primary reference (see In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)) and that the artisan is not compelled to
blindly follow the teaching of one prior art reference over the other without the exercise of
independent judgement (Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ
1025, 1032 (Fed. Cir. 1984)). We also note that Wilson contemplates secondary displays behind
the cap. The implication that one of ordinary skill in the field of commemorative displays would
have been unable to make the necessary modifications with respect to positioning, dimensioning
and relative scales, for example, to incorporate a picture of a scene into the display apparatus of
Wilson such that it is not substantially obscured by the cap is untenable.
For the reasons discussed above, the appellants’ arguments fall short in persuading us
that the examiner has erred in rejecting claims 1, 17, 32 and 37-45 as being unpatentable over
Wilson in view of Feher1 and Rand. The rejection is sustained. The like rejection of dependent
claims 5-9, 13, 21-24 and 28 is also sustained, as the appellants have not separately argued the
rejection of these claims apart from claims 1, 17 and 32. (see In re Young, 927 F.2d 588, 590, 18
1 The examiner’s application of Feher is superfluous to the rejection of these claims but, in any event, has not been
specifically challenged by the appellants.
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