Appeal No. 1999-0112 Page 5
Application No. 08/693,614
including the film. At the oral hearing the appellant's
counsel, when questioned about this, conceded that there is an
inconsistency and that claim 5 should be amended by adding the
word "assembly" to the preamble. Accordingly, we find claim
5, and dependent claims 6 through 8, to be indefinite because
the subject matter defined in the body of claim 5 is
inconsistent with the invention as set forth in the preamble
of the claim.
Although we have rejected claims 5 through 8 as being
indefinite, in the interest of avoiding piecemeal appellate
review we will treat claim 5 as inclusive of the "rectangular
film..." and thus as being directed to a slide mount assembly,
and proceed to consider the § 103 rejection on that basis.
Cf. Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. &
Int. 1993).
--The obviousness rejection over Roehrl in view of Staehle--
Upon evaluation of all the evidence before us, it is our
conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
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