Appeal No. 2003-0156
Application 09/607,996
51, through column 10, line 27) to produce a substrate having a
protected ink image thereon.
In proposing to combine Bachrach and Brault, the examiner
concludes that it would have been obvious “to modify Bachrach’s
invention to include an . . . ink receptive layer for the
transparent sheet, as taught by Brault et al., to enable the user
to have a writing surface that may be written on and erased
repeatedly providing a customizable cover for the binder”
(answer, page 4).
The appellants’ argument that this proposed reference
combination stems from impermissible hindsight is persuasive.
Under § 103(a), the teachings of references can be combined only
if there is some suggestion or incentive to do so. In re Fritch,
972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The mere fact that the prior art might be modified in a manner
advanced by an examiner would not have made the modification
obvious absent some suggestion in the prior art of the
desirability of the modification. Id. In the present case,
there is nothing in the combined teachings of Bachrach and Brault
which would have suggested culling the adhesive ink receptive
layer from the laminated ink receptor element disclosed by Brault
and adding it to the clear vinyl sheet on the notebook binder
disclosed by Bachrach. This proposed modification springs from
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