Appeal No. 2006-2074
Application No. 10/158,197
pertinent to the problem addressed by the appellants of identifying knives
from the end portion of their handles.
The appellants argue that Bond and Arnold do not provide motivation
to apply an alphanumeric marking on the butt end of a knife handle to
reduce wear and tear on the knife blade (brief, page 12). To establish a
prima facie case of obviousness, references need not be combined for the
purpose of solving the problem solved by the appellants. See In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert.
denied, 500 U.S. 904 (1991). One of ordinary skill in the art would have
been motivated to combine the references for the reasons set forth above.
The appellants argue that if Sanelli’s symbol identified the type or
length of the knife blade, the symbol would no longer indicate the type of
foodstuff with which the knife must be used (brief, pages 13-15). If
Sanelli’s symbol indicated that the type of blade is a bread cutting blade or a
meat cutting blade, the symbol still would indicate the type of foodstuff
(bread or meat) on which to use the knife.
Thus, Bond and Arnold strengthen the strong prima facie case of
obviousness of the claimed invention over Sanelli in view of Howell.
The appellants argue, in reliance upon a declaration and supplemental
declaration by Scott Fedor, that they have provided evidence of commercial
success, consumer praise and copying which overcomes any prima facie
case of obviousness (brief, pages 17-18). For the following reasons the
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