Appeal 2007-1593
Application 10/462,972
combination themselves deficient in demonstrating error on the part of the
Examiner, we sustain rejection (2) as well.
With respect to rejection (1) as to claim 23, Appellant merely argues
that “the Examiner has completely failed to point out where the elements of
method claim 23 are found in the combination of Alden with Perrin or
Hobbs” (Appeal Br. 7). The Examiner responds to this argument by
pointing out that “the only method step [of claim 23] is to distribute to the
recipient a clear plastic container filled with small objects that are visible
without opening the container” and proceeding to clarify where the elements
of that step are found in Alden (Answer 9). To the extent that Appellant’s
arguments that the Examiner has ignored the claim requirements of small
objects present in the container and a business card secured to the container
and that the Examiner has not shown where the step of distributing to a
recipient is found in the prior art (Reply Br. 4) apply to rejection (1), such
arguments are not persuasive for the reasons that follow. Rejection (1) is
sustained as to claim 23.
The Examiner has addressed the “small objects” limitation from two
angles. First, the Examiner points out that “the business cards within the
container are considered small objects” (Answer 9). While this may be true,
it overlooks the fact that Alden does not teach filling the container with
business cards. Although Perrin teaches a container filled with business
cards, the Examiner has not made a determination that it would have been
obvious to combine that teaching of Perrin with Alden by placing business
cards, rather than a magnetic tape, in Alden’s mailer. The Examiner’s
alternative position, however, is well taken. The Examiner’s alternative
position is that, “[m]oreover, Alden discussed providing mailers for small
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