Appeal 2007-3167
Application 10/320,295
1 provide sufficient evidence to show that one having ordinary skill in the art
2 would have done what Appellant did. United States v. Adams, 383 U.S. 39
3 (1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed.
4 Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
5 Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
6 2006). The mere fact that all the claimed elements or steps appear in the
7 prior art is not per se sufficient to establish that it would have been obvious
8 to combine those elements. United States v. Adams, id; Smith Industries
9 Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
10 1415, 1420 (Fed. Cir. 1999).
11
12 ANALYSIS
13 We begin with the rejection of claims 23-27 under 35 U.S.C. § 103(a)
14 as being unpatentable over Nakamura in view of Will. We note at the outset
15 that the process of claim 23 does not include the wrapper, but only the bar of
16 soap and the stiffening member. From facts 5-8 we find that Will wraps the
17 bar of soap with the liner 2, but does not wrap the stiffening member around
18 the ends of the bar of soap (Fig. 1). Thus, Will describes the claimed
19 invention with the exception that the liner of Will is made of paper. In
20 Nakamura, the stiffening member 1, 2 is wrapped around the bulky material
21 (facts 2-4). We find that as broadly recited in claim 23, the language does
22 not preclude the stiffening sheet from being folded before the bulky material
23 is added. For example, if the stiffening member 1, 2 of Nakamura is folded
24 into a tube shape and the bulky material is slid in from an open edge of the
25 stiffening material, this meets the claimed "wrapping the bar of soap (bulky
26 product) with the stiffening material." Note that claim 23 does not require
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013