Appeal No. 2006-1371
Application No. 10/323,250
The appellants’ method claims 19-23 require that the height
of each of the end and side walls of a packaging enclosure and
the height of each of a plurality of product packs inside the
enclosure are substantially the same.
The examiner argues that “[i]t would have been an obvious
matter of design choice to provide product packs of a height
substantially equal to the opposite side and end walls since the
applicant has not disclosed that such an arrangement is for any
purpose or solves any stated problem, and one of ordinary skill
in the art would expect the package of Carnes to perform equally
well with the product packs shown in Figure 3 or product packs
having a height substantially equal to the opposite side and end
walls” (final rejection mailed June 3, 2004, page 3).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient
to establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability of
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