Appeal No. 2006-0476
Application No. 10/365,258
memorandum recording medium comprises an erasable surface divided into a
plurality of sections. See column 4, lines 36 through 43 and figure 3.
Rejection of claims 1 though 4 and 6 through 11
Appellants argue, on pages 14 and 15 of the brief, that one would not be
motivated to combine Newhouse and Seabrook as asserted by the examiner.
Appellants reason that Newhouse provides no discussion of receiving information
on the label and Seabrook is intended to be portable. Further, appellants argue
that such a combination would defeat Seabrook’s purpose, of making the
information visible, as Newhouse’s label holder is hidden most of the time.
The examiner argues, in response, on page 9 of the answer: “Seabrook
teaches applying information to a label area. Newhouse teaches a label with
information. It would have been obvious to utilize such an area so that the user
of the Newhouse device may make their own notations on the label, particularly if
the label involves the use of equipment.”
We concur with the examiner regarding the user making notations on the
device of Newhouse. However, we do not find objective evidence in either
reference that would suggest to the skilled artisan that Newhouse should be
modified to contain a dedicated area of said label as recited in claim 1. Claim 1
recites “receiving, from said user, information on a dedicated area of said label
when said label is pulled out of said opening.” In rejecting claims under 35
U.S.C. § 103, the Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
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