Appeal No. 1999-0112 Page 8
Application No. 08/693,614
adapted to be displayed therein" (answer, pages 3-4). The
examiner adds that "[i]f film taught by Staehle was mounted in
the slide mount taught by Roehrl the open positioning holes
would engage the positioning pin" (answer, page 5). The
examiner's reasoning is that both Roehrl and Staehle teach
conventional film having holes and both films are adapted to
be mounted (answer, page 5).
The appellant argues that "[t]he Examiner has cited no
reference suggesting the claimed combination, and has
presented no convincing line of reasoning as to why the
claimed invention would have been obvious in view of the cited
references" (brief, pages 3 and 4).
It is our opinion that the examiner has not cogently
explained, nor is it evident, why a person of ordinary skill
in the art would have found it obvious to utilize Staehle's
film in Roehrl's film mount. Indeed, it is not even clear
that the open hole portions of Staehle's film would be usable
in Roehrl's film mount. Roehrl's film is mounted using
enclosed, not open, holes placed over the projections (17).
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