Ex parte RASEL - Page 5




          Appeal No. 98-0384                                                          
          Application No. 08/579,639                                                  


               flexible end covers (figure 28) and teaches                            
               providing a hub (18) inserted into a core (11).                        
               Weaver teaches providing a sealing disk (3) with a                     
               hub-shaped section (5) and a flexible section (8) as                   
               an end cap.  Pomeroy teaches providing end caps                        
               comprising a hub-shaped section (3) with a sealing                     
               disk (2) on a photosensitive material package.  It                     
               would have been obvious to provide a wider cover and                   
               fold over the edges and to provide a hub as taught                     
               by Takahashi '601, and to provide a sealing disk as                    
               taught by Weaver and/or Pomeroy in the end caps of                     
               the package of Syracuse to provide secure edges and                    
               to increase protection of the ends of the material                     
               even when a portion of the material has been                           
               dispensed.                                                             
                    In reference to the "curved overhanging edge                      
               portions", when the cover of Syracuse are [sic, is]                    
               rolled around the roll of photosensitive material                      
               the edges are inherently curved.  [Answer, pages 3                     
               and 4.]                                                                
               We will not support the examiner's position.  It is well               
          settled that it is the teachings of the prior art taken as a                
          whole which must provide the motivation or suggestion to                    
          combine the references.  See Uniroyal, Inc. v. Rudkin-Wiley                 
          Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.                  
          1988) and Interconnect Planning Corp. v. Feil, 774 F.2d 1132,               
          1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985).  Here, absent the              
          appellant's own disclosure, we can think of no reason why one               
          of ordinary skill in this art would have been motivated to                  


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