Ex parte HILL et al. - Page 5




          Appeal No. 96-2712                                                          
          Application 08/313,548                                                      


               It would have been obvious to one of ordinary skill in                 
               the art at the time the invention was made to provide                  
               the lower edge of Coit's card, as seen in Figure 5,                    
               with an entrapping flap, as taught by either Clark or                  
               Standal et al., because it would provide an extra                      
               measure of security for Coit's card when the folder is                 
               unfolded.  The flap would provide the sole means for                   
               releasably holding the card against movement out of the                
               corner pockets in a fourth direction when Coit's mailer                
               is folded and when it is unfolded.  As can be seen from                
               Figure 2 of Coit, the card is spaced from the fold.                    
               Therefore, when an entrapping flap is added, as taught                 
               by either Clark or Standal et al., the fold does not                   
               engage the card when Coit's mailer is folded and, thus,                
               does not hold the card against movement.  The partic-                  
               ular shape of the flap (claim 9) would have been an                    
               obvious matter of design.                                              
               The limitations which relate to automatic insertion add                
               no structure to the claimed form.                                      

               Appellants argue that none of the references relied upon by            
          the examiner in this rejection show carriers adapted for auto-              
          matic insertion (brief, page 8).  More specifically, appellants             
          contend (brief, page 9) that Coit is not adaptable for automatic            
          insertion and "expressly teaches manual insertion of a mailing              
          folder," that Clark "emphasizes manual insertion and teaches away           
          from a flap," and that Standal "relates to envelopes with paper             
          inserts which are shared [sic] separately by hand." In addition,            
          appellants urge that Coit clearly teaches away from a flap by               
          "emphasizing wedge trapping of a card across preweakened fold               
          lines."                                                                     

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