knowledge of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.’” Kahn, 441 F.3d
at 987-88, 78 USPQ2d at 1336 (quoting In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1317 (Fed. Cir. 2000)).
The appellants challenge the examiner’s showing of motivation to combine only
Jones and Burrow. As such, we focus our review on this combination. We find that bot h
Jones and Burrow are in the same field of feminine hygiene product packaging as the
claimed invention and are directed to the same problem of resealable hygienic packagi ng
as the claimed invention. As discussed above we find that Jones discloses a receptacle
similar in structure to the claimed receptacle and housing multiple disposal containers for
used pads, Burrow teaches that it was common to package pads in the same packaging
that was later used to dispose of the pads, and May shows that slider devices were
comm only used as closures for resealable receptacles. Based on these findings, we ho ld
that the teaching in Burrow of using disposal containers for both storing new p ads and
disposing of used pads would have provided a clear suggestion to one skilled in the art at
the time the invention was made to use the disposal containers (20) of Jones for storing
new pads, to obviate the need to have separate containers for new and used pads an d to
economize material by using the same container twice. As such, one of ordinary skill in
the art at the time of the invention, possessed with the understandings and knowledge
reflected in the prior art, and motivated by the general problem facing the inventor, w ould
have been led to make the combination recited in the claims. Accordingly, we sustain th e
rejection of claims 1-7 as unpatentable over cited art.
The appellants separately argued the patentably of depen dent claim 8. Specifically,
the ap pellants argued that they used the term “horizontally” in reference to the orienta tion
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