Appeal 2007-2897
Application 09/934,777
name or warning. (Williams, col. 2, ll. 23-31, col. 3, ll. 33-36.) Okisawa further
evidences that it was known in the art to provide a tape with repeating room
destinations to reduce the inconvenience of writing the room designation.
(Okisawa, translation 3 ¶10, Drawing 1.) We further find that the claim language
before us includes the transitional language "comprising", which allows for the
inclusion of additional repeated locations on the tape.
We find that it would have been obvious to one of ordinary skill in the art to
provide a tape with a single, repeating room designation in view of the
combination of Williams, teaching a preprinted tape with a single address or
destination, and Okisawa, teaching a packing tape with multiple repeating room
designations. The combination of Williams and Okisawa would not have required
circling of a room designation or location and thus no marking of the box or tape
with a writing instrument would have been required.
Appellant argues Okisawa teaches that a "selected room or location is
circled with a writing instrument so as to identify the destination of the box. This
not only requires a writing instrument and additional steps, but can present the
problem of smudging, . . . as disclosed in Applicant's application." (Br. 14.) We
are not persuaded by this argument. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the teachings of
a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231
USPQ 375, 380 (Fed. Cir. 1986). The test of obviousness is whether the teachings
of the prior art, taken as a whole, would have made obvious the claimed invention.
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Williams teaches pre-printed tape with a single address or destination. We find
one of ordinary skill in the art aware of the prior art as a whole, including the
teachings of Okisawa of a tape repeating multiple room designations, would have
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