Ex Parte TRICK - Page 15



          Appeal No. 2001-1306                                      Page 15           
          Application No. 08/100,019                                                  

          1629, (Fed. Cir. 1996), In re Sernaker, 702 F.2d 989, 995, 217              
          USPQ 1, 6 (Fed. Cir. 1983).                                                 
               Our review of Jones reveals that the reference teaches                 
          producing photographs with borders or writings by using one or              
          more masks that are superimposed on the film for use in a regular           
          or instant camera (col. 2, lines 32-62).  Thus, the desired                 
          configuration can be produced in the print at the time of making            
          the exposure for the instant developing films.  Jones further               
          teaches that the mask member may remain in the camera during                
          several succession exposures since it does not interfere with the           
          forward feeding of the film (col. 2, lines 12-16).  However, we             
          find no teachings or suggestions in Jones relating to the                   
          limitation of exposed and unexposed portions on each frame of a             
          sealed photographic film, that would overcome the deficiencies              
          noted above in Ames.  Therefore, we do not sustain the rejection            
          of claims 4, 5, 12 and 13 under 35 U.S.C. § 103 over Ames in view           
          of Jones.                                                                   
               With respect to the combination of Jones with Guez, it is              
          our view that the Examiner has established a reasonable prima               
          facie case of obviousness with respect to claims 4 and 5.  Based            
          on our review of Jones, we agree with the Examiner that it would            
          have been obvious to substitute an instant developing film for              





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