Appeal No. 1996-2883
Application No. 08/172,466
Kumanomido discloses a flexible film holder having an
opening for receiving film [see Figure 9]. Roberg also
discloses such a film holder [see Figure 3, for example].
Finally, Kogane also discloses such a film holder [see Figures
1 and 5]. It is our view that the film holders disclosed by
Kumanomido, Roberg or Kogane are each sufficient to fully meet
the film holder of claim 1 because the “designed” limitation
adds nothing.
Since the teachings of Jones are unnecessary to meet
the invention of claim 1, appellants’ arguments regarding the
deficiencies of Jones and the lack of motivation to combine
the teachings of Jones with either Kumanomido, Roberg or
Kogane are not relevant to the scope of invention as set forth
in claim 1. Thus, we would sustain the obviousness rejection
of claim 1 based on Kumanomido, Roberg or Kogane taken alone.
Even though we sustain the examiner’s rejection for different
reasons than those advanced by the examiner, our position is
still based upon the collective teachings of the references
and does not constitute a new ground of rejection. In re
Bush, 296 F.2d 491, 496, 131 USPQ 263, 267 (CCPA 1961); In re
Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 442 n.2 (CCPA
8
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