Appeal No. 1997-0012
Application No. 08/174,901
OPINION
We have carefully considered the entire record before us,
and we will reverse the rejection of claims 1 through 10.
To establish a prima facie case of obviousness based on a
combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to
make the specific combination that was made by the applicants.
In re Raynes, 7 F.3d 1037, 1039, 28 USPQ2d 1630, 1631 (Fed.
Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). Obviousness cannot be
established by hindsight combination to produce the claimed
invention. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991). Here, the examiner has failed to
establish a prima facie case of obviousness.
The primary reference to Radl, discloses an apparatus for
generating a signal representing edge positions of address
labels and apertures located on a mailpiece. The edge
location signals may be used in determining the positions of
the address labels and apertures on the mailpiece for scanning
by an optical character reader. As shown in Figure 1, Radl
5
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