Appeal No. 97-3000
Application 08/370,867
In rejecting claims 1 through 4, 9, 12, 14 and 15 under
35 U.S.C. § 103 relying on Lyman, the examiner has recognized
that Lyman fails to disclose, teach or suggest a photographic
display or frame for pictorial matter which includes "separate
left and right edge members defining channels or top and bottom
edge members defining channels receiving the left, right, top and
bottom sides of the panels" (answer, page 3). To address these
differences between the applied prior art and the claimed subject
matter, the examiner has urged that
[i]t would have been obvious to one having
ordinary skill in the art at the time the
invention was made to integrate the side, top
and bottom edge members into the front and
back viewing panels, since it has been held
that omission of an element and its function
in a combination where the remaining elements
perform the same functions as before involves
only routine skill in the art.
It is apparent to us from the examiner's foregoing
statement of "obviousness" that the examiner has misapplied the
above-noted precept of patent law concerning elimination of an
element and its function (set forth in cases such as In re
Larson, 340 F.2d 965, 969, 144 USPQ 347, 350 (CCPA 1965) and In
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