Ex parte HILL et al. - Page 8




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


          mailer and positioned opposite the pair of opposed card corners             
          received in the corner pockets of the mailing folder, so as to              
          provide additional securement for the card therein when the                 
          mailing folder is in an unfolded condition.  Appellants' own                
          arguments (brief, page 13) note that the mailing folder of Coit             
          has "nothing to prevent the... inserted card from falling out the           
          bottom (i.e. fourth rectilinear direction) of the mailing                   
          folder... when the mailing folder envelope is opened."                      

               In this regard, we note that it is well settled that where             
          the issue is one of obviousness under 35 U.S.C. § 103, the proper           
          inquiry should not be limited to the specific structure shown by            
          a reference, but should be into the concepts fairly contained               
          therein, with the overriding question to be determined being                
          whether those concepts would suggest to one skilled in the art              
          the modification called for by the claims.  See In re Bascom, 230           
          F.2d 612, 614, 109 USPQ 98, 100 (CCPA 1956).  Furthermore, under            
          35 U.S.C. § 103, a reference must be considered not only for what           
          it expressly teaches, but also for what it fairly suggests (In re           
          Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re            
          Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)), as             



                                          8                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007