Appeal No. 2006-1557 Παγε 13
Application No. 10/220,514
equipment cost savings in producing the paper is achieved as
discussed by Elger (column 1, lines 36-46 and column 2, lines
3-12). Indeed, the advantages for processing a divided web as
disclosed in Elger correspond to the advantages of the claimed
invention, as referred to by appellants in the paragraph bridging
pages 2 and 3 of the brief. Just as unexpected results can be
persuasive of the non-obviousness of claimed subject matter,
expected results, as here obtained, evidence the obviousness of
the subject matter before us in this appeal.
For reasons set forth above and in the answer, appellants’
arguments with respect to a lack of suggestion of the claimed
subject matter in Elger simply miss the mark.6
Consequently, we shall also sustain the examiner’s § 103
rejection, as to all of the rejected claims, on this record.
6 We are bound to consider the disclosure of each reference for what it fairly
teaches one of ordinary skill in the art, including not only the specific teachings, but also
the inferences which one of ordinary skill in the art would reasonably have been
expected to draw therefrom. See In re Boe, 355 F.2d 961, 148 USPQ 507 (CCPA
1966); and In re Preda, 401 F.2d 825, 159 USPQ 342 (CCPA 1968). Concerning this
matter, it is well settled that a reference must be considered in its entirety, and it is well-
established that the disclosure of a reference is not limited to preferred embodiments or
specific working examples contained therein. See In re Fracalossi, 681 F.2d 792, 794
n. 1, 215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192
USPQ 278, 280 (CCPA 1976). Nor is it necessary that suggestion or motivation be
found within the four corners of a reference. See In re Bozek, 416 F.2d 1385, 163
USPQ 545 (CCPA 1969).
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