Appeal No. 98-1528 Page 4
Application No. 08/374,039
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)).
The first standing rejection of independent claims 1 and
22 is that they are unpatentable over the combined teachings of
Scragg and Sacramento Bee, The Dallas Morning News, or The
Vancouver Sun. In our view, none of the three combinations
advanced by the examiner establish a prima facie case of
obviousness with regard to the subject matter recited in these
two claims, and we therefore will not sustain this rejection.
We begin our analysis by noting that the problem to which
the appellant has directed his inventive energies is, as
specifically stated in the opening lines of claim 22,
reassuring a child that a change of residential address has
been received by an ethereal being, as an aid to assisting the
child in coping with residential relocation. Claim 1 sets
forth the invention in more broad language, in that the
preamble does not limit it to a child. The problem of
acknowledgment by an ethereal being of an occupant’s change of
address is not mentioned in any of the applied references. In
fact, none of the references are at all concerned with the
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