Appeal 2006-0153
Application 10/082,635
subjected to a thermoforming operation…). The ordinary
artisan would have been led to employ the recycled polyester
(recycled or post consumer PET) as such would have reduced
the cost of the overall operation. [Compare Answer 8-9 with,
e.g., Br. 10.]
Given the above uncontroverted facts, we determine that one of
ordinary skill in the art would have been led to employ, inter alia, a gas
impermeable film containing recycled polyester in the bubble wrap making
process suggested by the combined disclosures of Ottaviano and either Fox
or Kawakami, motivated by a reasonable expectation of successfully
obtaining the cost improvement.
The Appellants contend that in reference to page 2 of the
Specification, the Appellants’ invention employs recycled polyester for
solving a problem not appreciated by the prior art references (Br. 10-12).
Specifically, the claimed process is said to employ the recycled polyester
because “[the] recycled polyester can be processed (i.e., extruded, formed,
et.) about 25°F lower than the temperature at which virgin polyester can be
processed” (Br. 11). This contention, however, overlooks the principle that
the motivation in the prior art to combine the prior art teachings does not
have to be identical to that of the Appellants to establish obviousness. In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996). This
is especially true in this case since one of the reasons for employing the
recycled polyester disclosed in the Specification was known at the time of
the invention. Compare the above finding relating to the cost benefit and the
Appellants’ statement relating to the desirability to provide a less expensive
polymer at page 2 of the Specification. Ex parte Obiaya, 227 USPQ 58, 60
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