Ex Parte Hewett - Page 8



            Appeal 2006-2827                                                                                
            Application 09/883,893                                                                          
            result.”  Id. at 1739-40, 82 USPQ2d at 1395.  It nevertheless rejected the                      
            Government's claim that Adams' battery was obvious.   In doing so, the Court                    
            relied upon the corollary principle that when the prior art teaches away from                   
            combining certain known elements, discovery of a successful means of combining                  
            them is more likely to be nonobvious.  Id. at 1740, 82 USPQ2d at 1395. (citing                  
            United States v. Adams, 383 U.S. 39, 51-52 (1966)).  Sakraida and Anderson’s-                   
            Black Rock are illustrative – a court must ask whether the improvement is more                  
            that the predictable use of prior art elements according to their established                   
            function.”  Id.                                                                                 

                                               ANALYSIS                                                     
               A. Rejection of claims 40-45 and 54 under 35 U.S.C.  103(a) as                              
                   unpatentable over Yates in view of Wilson.                                               
                   The Examiner found that it would have been obvious for one to mount a                    
            combination tissue dispenser and disposal on a shower wall as taught by Wilson,                 
            “because Wilson protects the tissue from shower spatter, persons often have runny               
            or congested noses needing clearing while in the shower or persons need tissues for             
            localized cleaning while in the shower” (Answer 5-6).  The only discussion of                   
            “persons often have runny or congested noses needing clearing while in the shower               
            or persons need tissues for localized cleaning while in the shower,” as cited by the            
            Examiner, appears not in the prior art but in the Specification.   See, e.g.,                   
            Specification, 1:15-18 (“Use of these tissues in the dry areas of the bathroom does             
            not result in the most effective cleansing of the nasal passages, because the mucus             

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