Appeal 2007-1925
Application 09/391,869
folded outward, much less to teach away from the use of a pocket constructed on
one side surface of a base sheet, the element for which the Examiner relies on Dick
(Answer 5). Where, as here, art is silent on the capabilities or function of any
particular item, that is not teaching away from its use. Further, the Court in KSR
noted that “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” 127 S.Ct. at 1742, 82 USPQ2d at 1397. It would take no more
than ordinary creativity for a person of ordinary skill to adapt Wyant to form tabs
with the base sheet and pocket sheet attached along the perimeter edge as disclosed
in Dick. As noted by KSR:
Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a
puzzle.
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
Appellant’s claim 8 recites “the base sheet and the pocket sheet are adhered
to one another along their respective first edges, third edges and fourth edges.”
With respect to claim 8, Appellant argues that there is no specific suggestion in
either of the references to modify Wyant to adhere the pocket sheet to the base
sheet along their respective first, third, and fourth edges. KSR forecloses
Appellant's argument that a specific teaching is required for a finding of
obviousness. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
With respect to claim 32, Appellant reasserts the above arguments and
asserts that the combination of Wyant with Dick would not meet the limitation of
“rendering the insert passable through a copier or printer in sequence with a sheet
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