Ex parte YOUNGER - Page 4




          Appeal No. 1996-0743                                                        
          Application 08/152,741                                                      


               The examiner recognizes that Stewart is silent as to the               
          overall dimensions of the sheet and the placement of the                    
          various fold lines and strips of adhesive relative to the                   
          sheet’s edges.  However, the examiner considers that                        
               [t]he exact specific dimensions of the business form                   
               to be a letter or a legal sized sheet of paper and                     
               the placement of the transverse line of weakening                      
               and the lateral strip would have been an obvious                       
               matter of design choice . . . since applicant has                      
               not disclosed                                                          

               that the position of the transverse line of                            
               weakening and lateral strip and size of the business                   
               form solves any stated problem and it appears that                     
               the invention would perform equally well with the                      
               business form as shown in Stewart et al.  [First                       
               office action, page 5.]                                                
               Regardless of how we attempt to read claims 7 and 9 on                 
          the envelope of Stewart, we cannot agree with the examiner’s                
          position to the effect that it would have been obvious to                   
          reconfigure Stewart’s reusable envelope in the manner that                  
          would correspond to the subject matter of claims 7 and 9.                   
          Considering first claim 7, Steward’s envelope comprises only                
          two laterally extending strips of adhesive, namely, strip of                
          adhesive 47 on the side of the sheet that will become the                   
          inside of the first mailed envelope (see Figure 1), and strip               

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