Appeal No. 2001-1306 Page 14
Application No. 08/100,019
developing” kind as recited in claims 4, 5, 12 and 13.
Accordingly, the rejection of claims 4, 5, 10 through 14, 16 and
17 under 35 U.S.C. § 102 over Guez is not sustained.
We next consider the rejection of claims 4, 5, 12 and 13
under 35 U.S.C. § 103 over Guez or Ames in combination with
Jones. We take claim 4 as the representative claim of this group
and observe that the claim has the same recited elements as claim
1 and further requires that the package be “of instant developing
film.” The rejection is based on the Examiner’s proposed
modification of the partially exposed film of Ames or Guez by
using the instant camera of Jones to provide a decorative border
for each film frame (answer, page 4). In response, Appellant
argues that there are no teachings or suggestions in Jones to
overcome the deficiencies in Ames and Guez (brief, page 21).
The initial burden of establishing a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Where, as here, a
conclusion of obviousness is premised upon a combination of
references, the examiner must identify a reason, suggestion, or
motivation which would have led one having ordinary skill in the
art to combine those references. See Pro-Mold & Tool Co. V.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
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