Appeal 2006-3021
Application 09/782,337
1976); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896
(C.C.P.A. 1963).
Appellants’ argument that Akao “teaches away” from the claimed
invention is also not persuasive. As correctly stated by the Examiner
(Answer 9-10), the pertinent disclosure of Akao is set forth under
“Background of the Invention” and is discussing “heat-sealing,” not “heat
laminating.” The Examiner finds that the “heat-sealing” of Akao is different
from the “heat laminating” of Appellants and provides support for this
finding (Answer 10). Appellants neither dispute nor rebut this finding in
their Reply Brief. Therefore, “heat-sealing” has not been established as
equivalent to “heat-lamination” as recited by Appellants. Furthermore, even
if heat-sealing is equivalent to heat laminating, Appellants have not
established that “heat-sealing” would be unlikely to produce the objective of
Appellants’ invention, namely bonding of the layers. See In re Gurley, 27
F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Akao does not
teach that heat sealing will not work, but this reference merely indicates that
it is less desirable. Therefore we determine that Akao does not “teach away”
from the claimed subject matter.
Additionally, we determine that Foster teaches that the “polyethylene
film and the polyethylene foam sheet can be laminated together by the use of
heat and/or adhesive” (col. 8, ll. 24-26). This teaching from Foster clearly
would have suggested to one of ordinary skill in this art that heat lamination
would have been useful as a substitute for the adhesive layers in the process
and composite of Akao. See In re Fout, 675 F.2d 297, 301, 213 USPQ 532,
536 (CCPA 1982) (Express suggestion to substitute one equivalent for
another need not be present to render such a substitution obvious).
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