Appeal No. 2006-1498
Application No. 09/973,031
is pulled out of the pocket by use of a finger tab (12) (lines
56-59).
The examiner argues that "[i]t would have been obvious to
one having ordinary skill in the art at the time the invention
was made to include as many images [on Fountain's card] as
desired, since it has been held that mere duplication of the
essential working parts of a device involves only routine skill
in the art" (answer, page 5). The examiner is relying on a per
se rule of obviousness. As stated by the Federal Circuit in In
re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), "reliance on per se rules of obviousness is legally
incorrect and must cease." For a prima facie case of obviousness
to be established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The examiner has not
explained how Fountain itself would have fairly suggested a
plurality of images to one of ordinary skill in the art.
The examiner argues that "biographical" relates to an
account of the life of something, and that because "life of
something" can pertain to either a single person or a group,
Fountain would have fairly suggested, to one of ordinary skill
4
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