Appeal 2007-0916
Application 10/051,486
aesthetic variations cannot distinguish over otherwise apt prior art: there
must be a functional connection between the printed matter and the
substrate.41
The surface ornamentation lacks a functional connection
As the examiner explained, those skilled in the art knew to vary tabs,
shadow lines, and granule colors in pursuit of aesthetically pleasing
shingles.42 To the extent that they provide the illusion of a thicker material,
that function was known in the art. While the specification discusses the
desirability of a wood-shingle aesthetic, no such aesthetic is built into the
claims. Moreover, neither the specification nor any testimony cited on
appeal provide a basis for finding that the claimed arrangements of tabs,
shadow lines, and colored granules combine to produce any unexpected
result. Instead, the claimed invention is simply the predictable use of prior
art elements according to their established functions.
Owens Corning argues that the references cannot be literally
combined to teach the precise combinations claimed. The test for
obviousness, however, does not require anticipation by combination. The
examiner's approach of determining what those of skill in the art knew and
would do is more to the point. The artisan knew how to use tabs, shadow
lines, and granule-color variation to produce a variety of aesthetic effects
41 While the concurring opinion suggests this is a new ground of rejection,
the fact is that the statutory basis and cited prior art remain the same. We
have simply provided a time-honored label to the examiner's thesis that the
precise positioning of the aesthetic elements of the shingles would have been
obvious.
42 E.g., Examiner's Answer (EA) at 4-5, 7, and 10-11.
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