column 1, lines 5-41, there is no suggestion for the addition of backings, or rigid members as required
by the claimed subject matter. Neither is there any rationale presented why a transparent substrate
would be substituted for a paper substrate. Moreover, even if the substitution was made, we still would
not obtain the invention of the claimed subject matter, as a light reflecting backing over a wrong reading
image would be missing.
Based upon the above considerations, even if the examiner was correct in combining the Whalen
and Malhotra in the manner supra, the structure created would, in any event, fall short of the invention
defined by the claimed subject matter, as the aforesaid claimed subject matter requires features that
cannot be achieved by combining Whalen and Malhotra. See Uniroyal Inc. v Rudkin-WileyCorp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert denied, 488 U.S. 825 (1988).
Moreover, the examiner must show reasons that the skilled artisan, confronted with the same
problems as the inventor and with no knowledge of the claimed invention, would have selected the
elements from the cited prior art references for combination in the manner claimed. We determine on
the record before us that there is no reason, suggestion, or motivation to combine the references in the
manner proposed by the examiner. Accordingly, the examiner has not established a prima facie case
of obviousness. See In re Rouffet, 149 F.d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
The rejection of the examiner is not sustained.
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