Appellant wins on 103, but loses on 102 in Ex parte Smalley
as to anticipation
The removal of Hoy’s strips 58, 60 creates a first opening capable of article removal when utilized with articles of appropriately configured sizes and shapes. See Ans. 4. The burden shifted to Appellants to show that removal of Hoy’s strips 58, 60 would not necessarily create a first opening that would allow for article removal. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show that this is not the case). Appellants’ arguments are not persuasive (...)
as to obviousness
[the examiner]concludes that “adding [the divider pad] would have been obvious because the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art.” Id. (citing In re Leshin, 227 F.2d 197 (CCPA 1960)).
Appellants contend that the instant case is distinguishable from the facts of In re Leshin. Reply Br. 7-8. In particular, Appellants contend that “the question [in the present case] is not the selection of a known material [as in Leshin, but] rather . . . whether it would have been obvious to add the claimed additional structure to the Hoy carton.” Id. The reasoning to support a conclusion of obviousness may, in appropriate circumstances, properly come from legal precedent established by prior case law. See, e.g., In re Eli Lilly & Co., 902 F.2d 943 (Fed. Cir. 1990). However, we find that the facts in the prior legal decision of Leshin are not sufficiently similar to the instant case to support the Examiner’s sole reliance on legal precedent in making a conclusion of obviousness. “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).