Appeal 2006-3311
Application 10/392,525
1 Second, the Appellant has not pointed out how the structure as
2 claimed in claim 1 differs in any way from the structure of Collins. It
3 appears that Collins’ closures as illustrated above have the same type of
4 closures as claimed in claim 1 in the same locations. Accordingly, it appears
5 that Collins’ flaps can be closed in any order.
6 The Appellant next urges that the combination of Collins with DeMay
7 is inappropriate in that the Examiner has “failed to provide a sufficient
8 motivation” (Br., p. 9, ll. 16-18). According to the Appellant, DeMay is
9 more concerned with minimizing material and Collins does not contemplate
10 a structure capable of retaining liquids or nesting. The objectives of each are
11 said to be “inconsistent”, and would not motivate the skilled artisan to
12 combine the references in the manner suggested by the Examiner. The
13 Appellant urges that the Examiner has applied hindsight. (Br. p. 9, ll. 22 - p.
14 10, ll. 6-8).
15 We are unpersuaded by this argument.
16 First, we observe that Collins provides sufficient express motivation
17 to make the combination suggested by the Examiner. Collins explicitly
18 states that his securing flaps are inexpensive to form, easy to fasten and
19 unfasten, and will hold securely upon being fastened. (Collins, col. 1, ll. 5-
20 10). This is sufficient motivation to inform one of ordinary skill in the art
21 that the closure flaps are a superior substitute for the single hook of DeMay.
22 Second, even without an express motivation, as stated in In re Fout,
23 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982) “Express suggestion
24 to substitute one equivalent for another need not be present to render such
25 substitution obvious.” Replacing one type of known fastening system with
14
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Last modified: September 9, 2013