Ex Parte CRAWFORD - Page 4




              Appeal No. 2003-0790                                                                Page 4                
              Application No. 09/138,063                                                                                


                            peeled from the adhesive coating 14 by separating a corner                                  
                            of the sheet 16 from the coating 14 and pulling the corner                                  
                            there across.  The photograph is then centered over the                                     
                            panel 12 and placed in contact with the adhesive coating 14                                 
                            so that the photograph suitably adheres to the unit 10.  The                                
                            panel side 20 is then addressed and stamped for mailing.                                    
                            Of course, an optional message can be applied to the panel                                  
                            region indicated 24.                                                                        
                                   If, after receiving the mounted photograph, the                                      
                            addressee desires to display it, he can either frame the                                    
                            photograph and unit 10 within the suitable frame or convert                                 
                            the unit panel 10 to an easel. . . .                                                        
                                   An embodiment of the method of this invention                                        
                            includes the steps of constructing the unit 10.  The relatively                             
                            rigid panel 12, a suitable adhesive, and the releasable                                     
                            backing sheet 16 are initially provided.  The adhesive is then                              
                            layered over the panel marginal portion 32.  The releasable                                 
                            backing sheet 16 is then substantially centered with the                                    
                            panel side 22 and placed into contact with the adhesive                                     
                            coating 14.  The backing sheet 16 is thereby positioned in                                  
                            such relationship with the panel 22 that its boundary edges                                 
                            are substantially even with those of the panel 22.                                          
                     The examiner concedes that the photograph, which the examiner apparently                           
              considers to be a sheet suitable for printing with a computer printer and having a glossy                 
              front face as recited in claim 14, lacks an adhesive lined on a rear face thereof as also                 
              called for in the claim.  The examiner simply dismisses this difference as “an equivalent                 
              alternative to placing the adhesive on the front of the backing material” (answer, page                   
              3) or “a mere reversal of the essential working parts of a device [involving] only routine                
              skill in the art” (answer, page 6).                                                                       
                     Even when obviousness is based on a single prior art reference, there must be a                    
              showing of a suggestion or motivation to modify the teachings of that reference.  See In                  





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