Appeal No. 2006-2895 Page 8
Application No. 09/971,469
“The test for an implicit showing is what the combined teachings,
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.” In re
Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (quoting In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
While we agree that both Anderson and the claimed method are directed at
solving the same problem of creating a lined carton blank, the nature of the
problem to be solved in this case is not enough to provide a showing of implicit
motivation. Anderson clearly suggests to an ordinary artisan to start with a pre-cut
blank. The examiner does not point to any knowledge of one of ordinary skill in
the art that would have led one to modify the method of Anderson to cut the blank
at the end. Rather, because Anderson starts its method with a pre-cut carton blank,
there would be no need to cut the blank again after applying the liner to it.
The examiner appears at one point to convert the obviousness rejection into
an inherent anticipation rejection, when he states, “Speculative foreseeable
circumstances such as misalignment of the cutting knives, loading of the wrong
type of pre-cut blank, insufficiently slotted pre-cut blank would all result in
anticipating the claimed process.” Supp. Answer, p. 10 (emphasis added). The
examiner also contends that the step of cutting through the carton sheet would
“inherently have taken place” given one of these circumstances. Supp. Answer,
p. 11 (emphasis added).
The appellants argue that Anderson does not inherently anticipate claim 1,
because none of the speculative foreseeable circumstances mentioned by the
examiner would inevitably occur. Supp. Reply Brief, p. 3. The appellants further
note that in order for any of these circumstances to occur, one of ordinary skill in
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