Appeal 2007-2137
Application 10/472,911
(King, p. 3, ll. 2-30; Examples). Based on these facts, the disclosures of
Leese and King as a whole, the disclosures of any other pertinent prior art,
and the level of ordinary skill in the art, the Examiner should consider
whether the evidence supports a prima face case of obvious under 35 U.S.C.
§ 103(a). See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)
(The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art); See also KSR, 127 S. Ct. 1727, 1734 (2007) (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”).
A key question to consider is whether Appellants are claiming
something that “is more than the predictable use of prior art elements
according to their established functions,” KSR, 127 S. Ct. at 1740, keeping in
mind that modifications within the skill of the ordinary artisan are likely
obvious. See Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
The Examiner must also consider any secondary considerations
Appellants place into evidence to overcome a conclusion of obviousness.
See Graham, 383 U.S. at 17-18. Appellants contend they have unexpectedly
discovered that if the density of the base layer is reduced to 0.65 g/cm3 or
less, the HDPE film will fuse to a blow molded product during in-mold
labeling (IML) (Br. 8-9).
Once a prima facie case of obviousness is established, the burden of
coming forward with evidence and argument in rebuttal is shifted to
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