Appeal No. 2006-2895 Page 6
Application No. 09/971,469
examiner found that it would have been obvious to one of ordinary skill in the art
at the time the invention was made to cut both the reinforcing liner and the carton
sheet by the slitting mechanism to insure the creation of separate panels to be later
folded. Supp. Answer, p. 4. The examiner further explained,
One of ordinary skill in the art would recognize the
advantages provided by the construction of the slitting
device of Anderson given a range of foreseeable
problems which may occur such as an insufficiently pre-
cut blank, misalignment of blank and reinforcing
material, inaccurate location of the reinforced blank
immediately prior to the slitting operation, etc. (note
Anderson provides guide 462), that would result in
cutting of the carton sheet 35. (Supp. Answer, p. 9.)
Even if we were to find that the knives of Anderson are capable of cutting
through the carton sheet, this capability does not provide the requisite motivation
for a prima facie case of obviousness. See e.g., In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992) (“The mere fact that the prior art may
be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
modification.”) The examiner attempts to distinguish Fritch from the present case,
because in Fritch the examiner’s finding of obvious was based on a combination of
two references, and in the present case the finding of obviousness is based on
Anderson alone. Supp. Answer, p. 7. We find this to be a distinction without a
difference. In both cases, a modification to the prior art was required in order to
render the claimed invention obvious. As such, in either case the examiner is
required to make a showing of a suggestion, teaching, or motivation from the prior
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