Ex parte KIKUCHI et al. - Page 4




          Appeal No. 96-1837                                                          
          Application No. 08/083,372                                                  


               Viewing the examiner’s rejection and rationale therefor in             
          the most favorable light, it is the examiner’s position that                
          Matsudaira discloses the claimed subject matter but for the                 
          buffer having a thermal expansion coefficient substantially                 
          intermediate the thermal expansion coefficients of the two                  
          adjacent members and for the fixing force recited in claims 4 and           
          7.  In order to compensate for these deficiencies, the examiner             
          cites Rajac for a teaching of a buffer having a similar thermal             
          expansion coefficient as the adjacent members and contends that             
          the claimed force range would have been obvious since this                  
          amounts to only “routine experimentation and optimization”                  
          [principal answer-page 5].                                                  
               First, with regard to the claimed force range, the range               
          recited requires a particular relationship between the fixing               
          force, the mass of the recording medium, the acceleration acting            
          on the medium and a minimum friction coefficient.  The examiner             
          cannot explain such a specific limitation away by merely labeling           
          the requirement “routine experimentation and optimization.”                 
               In any event, we never reach the limitations of the                    
          dependent claims because, in our view, the examiner’s reasoning             
          with regard to the rejection of the independent claims is flawed.           
          While Rajac teaches the use of a buffer having a similar thermal            

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