Ex Parte Cramer - Page 4

                Appeal No. 2007-0048                                                  Page 4                 
                Application No.  10/234,608                                                                  

                thereby providing an alternative means to separate panels from the web,”                     
                and, alternatively, “it would have been obvious to one of ordinary skill in                  
                the art to provide Martin’s web with “at least one perforation,” because as                  
                Kim suggests, it would facilitate separating the web into panels of desired                  
                size” (p. 7).                                                                                
                      Appellant argues that Gray and Kim would not suggest modifying                         
                Martin to reach the claimed invention because neither reference, though                      
                teaching perforations, teach perforations in a “dual web/aerogel-filled panel                
                construct.” Appellant concedes that Gray and Kim disclose perforations in a                  
                unitary panel but not in a “dual web/aerogel-filled panel construct.”                        
                However, it is Martin which shows the “dual web/aerogel-filled panel                         
                construct.” We note that Appellant does not traverse our findings in our                     
                Decision on Appeal regarding Martin. The decision (p. 10) clearly states that                
                “Martin discloses a web comprising a plurality of aerogel-filled vacuum                      
                insulated panels which can be cut into individual units as claimed.” In                      
                arguing that Gray and Kim do not specifically apply perforations to a “dual                  
                web/aerogel-filled panel construct,” without taking into consideration that                  
                Martin teaches the “dual web/aerogel-filled panel construct,” Appellant fails                
                to consider the combined teachings of the references.                                        
                      The test for obviousness is what the combined teachings of the                         
                references would suggest to those of ordinary skill in the art. In re Young,                 
                927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller,                      
                642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Whether or not an                          
                individual reference teaches a specific element of the claimed product is not                
                dispositive of the question of obviousness. Non-obviousness cannot be                        

Page:  Previous  1  2  3  4  5  6  Next

Last modified: September 9, 2013