Appeal No. 2006-1643 Παγε 26
Application No. 09/845,589
not patentably distinguish the claim over the prior art. In any
event, from the disclosure of Monn of providing printed
instructions, we find that an artisan would have been motivated
to provide indicia such as numbering on the pictures, if needed,
to assist the user in following the instructions. The rejection
of claim 27 under 35 U.S.C. § 103(a) is sustained.
We turn next to the rejection of claims 20-22 under 35
U.S.C. § 103(a) as being unpatentable over FJCP in view of Monn
and Morag. We begin with claim 20. The examiner’s position
(answer, page 6) is that FJCP and Monn do not teach sending a
digital image over a communication channel to a service provider
with instructions to the service provider. To overcome this
deficiency of FJCP and Monn, the examiner turns to Morag for a
teaching of
[A] method of generating a personalized photo album
comprising using digital images transmitted over a
service provider. The images and instructions are
transmitted by digital means such as over the Internet.
The service provider prints the images on a single
sheet of paper. Once the album is complete, an
electronic proof copy may be sent to the customer for
approval having computer-readable instructions for
viewing and/or printing of the album. Therefore, it
would have been obvious to one having ordinary skill in
the art at the time of the invention to modify FJCP’s
invention to include instructions, as taught by Morag,
for providing information related to the album between
the customer and the service provider.
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