Appeal 2007-1179
Application 10/399,984
to yield different shapes of tape with “easy, accurate and uniform severance
of portions thereof without the use of any measuring devices, special cutting
devices” (col. 1, ll. 8-10, 40-45; col. 2, ll. 14-43; and the Answer 4-5).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007), quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37
(Fed. Cir. 2006). The analysis supporting obviousness, however, should be
made explicit and should “identify a reason that would have prompted a
person of ordinary skill in the art to combine the elements” in the manner
claimed. KSR, 127 S.Ct. at 1731, 82 USPQ2d at 1389.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which case has not been adequately
rebutted by Appellant’s arguments. As shown by factual finding (2) listed
above, we determine that Sizemore clearly teaches the use adhesive tape
with detachable components in differing shapes. See Sizemore, col. 1, ll. 8-
10, where the invention is disclosed as “adhesive tape which is adapted to be
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