Appeal No. 96-1032
Application 08/197,443
The mere application of a known type of code
element for another to achieve the same outcome
would have been an obvious matter of design
preference determined by those having ordinary
skill in the art.
After fully considering the record in light of the arguments
presented in appellants’ brief and the examiner’s answer, we
conclude that the rejection should not be sustained.
It is well settled that obviousness cannot be established by
combining the teachings of the prior art, absent some suggestion
or incentive to make the combination. ACS Hospital Systems, Inc.
V. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). We do not find any such suggestion or
incentive in the present case. In particular, we find nothing in
Pusic which would suggest to one of ordinary skill in the art the
use of a bar code in place of the guide elements 20, 21 of Gunn,
as the examiner proposes. As the appellants note at page 6 of
their brief, guide elements 20 and 21 of Gunn “are only used to
adjust the reading orientation of the scanning equipment.” The
examiner extracts from Pusic a teaching that “using bar code(s)
as a tool to transmit identifying information is a common
practice in the postal mail handling operation,” but even if
Pusic’s disclosure may be so interpreted, there is no disclosure
of using a bar code in order to orient scanning equipment. The
most that Pusic might suggest would be to add to Gunn’s envelope
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