Appeal No. 2006-1451
Application No. 08/802,472
While this is what the Bond opinion states, the appellant fails to properly apply
this to claim 5. Claim 5 requires marketing a container that contains an article, the
container having a hollow interior. The claimed attributes of the container are that it is a
replica of a recognizable icon and that the article be such that it is used in an activity
that is visually suggested by the iconic shape. The appellant’s contention is that Bond
requires that Gossard explicitly recite the recognition and visual suggestion linkages
between the iconic shape, the activity and the article to form anticipation. Such is
simply not the law.
The inherent teaching of a prior art reference, a question of fact, arises both in
the context of anticipation and obviousness. In re Napier, 55 F.3d 610, 613, 34
USPQ2d 1782, 1784 (Fed. Cir. 1995). Gossard is available as anticipatory art for what
it explicitly, implicitly or inherently teaches. Gossard teaches an iconic package [Figs. 1,
4, 7, 10 and 11] each of which resemble their iconic sports playing pieces. Gossard
explicitly links the iconic shapes to the images on the trading cards (photographs) at col.
1 lines 19 to 25. The claim limitation is to an activity that the article is used in that is
visually suggested by the package. The linkage of visual suggestion is completely
within the mind of the person viewing the package. This may be inferred from the
teachings of Gossard and still be anticipatory because the Gossard reference is
available for its explicit, implicit and inherent teachings. Given that Gossard has
explicitly linked the iconic package with the articles contained, any activity that the
owner of the container would reasonably use its contents for is inherently suggested by
the iconic representation of the container, if only through Gossard’s linkage already
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