Appeal 2007-1925
Application 09/391,869
of paper.” Wyant discloses that the indexing member may be formed from any
conventional stationary paper including card stock and paper stock (Finding of
Fact 9). As such, the two-ply embodiment of Wyant, or the two-ply seams of Dick
combined with the single pocket arrangement of Wyant, would inherently be
capable of passing through a copier or printer in sequence with a sheet of paper
(Finding of Fact 20). Accordingly, the argument fails as to claims 32-34 for the
same reasons as it did for claim 35.
Appellant’s claims 1-9, 11-13, 16-18, and 32-34 were combinations which
only unite old elements with no change in their respective functions and which
yield predictable results. Thus, the claimed subject matter likely would have been
obvious under KSR. In addition, neither Appellant’s Specification nor Appellant’s
arguments present any evidence that the modifications necessary to effect the
combination are uniquely challenging or difficult for one of ordinary skill in the
art. Because this is a case where the improvement is no more than “the simple
substitution of one known element for another or the mere application of a known
technique to a piece of prior art ready for improvement,” KSR, 127 S.Ct. at 1740,
82 USPQ2d at 1396, no further analysis was required by the Examiner. KSR, 127
S.Ct. at 1740, 82 USPQ2d at 1396. Under those circumstances, the Examiner did
not err in holding that it would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify Wyant's pocket insert with a
separate pocket sheet attached to a base sheet to form a pocket insert as taught by
Dick for providing a more secured pocket.
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