Appeal 2007-1925
Application 09/391,869
USPQ2d 1089, 1094 (Fed. Cir. 1995)). In the present case, the disputed claim
limitation of “continuous two-ply seams” and the function it performs—to create a
pocket—are identical between the claimed invention and the prior art. Thus, the
selection of the continuous two-ply seam of Dick over the folded seam of Wyant
represents an obvious choice within the skill of the art, i.e., a choice between
known viable alternatives.
Appellant argues that Wyant and Dick teach away from each other
(Substitute Br. 14-18). The Examiner believed otherwise, finding that Wyant and
Dick do not teach away from each other, and that it would have been obvious to
one having ordinary skill in the art at the time the invention was made to modify
Wyant's pocket insert with a separate pocket sheet attached to a base sheet to form
a pocket insert as taught by Dick (Answer 5-6).
In particular, Appellant argues that Wyant and Dick teach away from each
other because combining Dick with Wyant would render Wyant inoperable for its
primary purpose—namely providing tabs that selectively can be folded outward of
the edge of the card (Substitute Br. 11). The Examiner correctly found that if the
base sheet and pocket sheet were attached along the perimeter edge as disclosed in
Dick, it would still be possible to fold back the tabs of Wyant near its attached
perimeter edge (Answer 6). Appellant argues that the only way the tabs of Wyant
can be formed is by forming the tab yielding sheet and the base sheet from a single
piece of material to form a folded line (Substitute Br. 11). Although this method is
consistent with an embodiment disclosed in Wyant, there is nothing in Wyant that
requires or suggests that this is the only way to attach tabs that can be selectively
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