Appeal No. 96-3950
Application No. 08/131,056
recited in claims 4 and 6, and the change into "option 1" is a
mode change as recited in claim 5.
However, after careful review of Appellants' arguments
and the Dennis reference, we reach the opposite conclusion
with regard to claim 3. The Examiner has addressed the
particulars of claim 3 only on page 6 of the Answer which
states
With regard to claim 3, "information concerning
resolution and margins", as claimed, is not
taught by Dennis. Most printing systems have
commands that designate resolution and margins.
It would have been obvious to one having
ordinary skill in the art at the time the
invention was made to use resolution and margins
information in the system of Dennis in order to
obtain the advantage of accurate size and position
control, respectively.
Appellants argue (Reply Brief, page 19) that claim 3 was
improperly rejected as being anticipated by Dennis since the
above statement by the Examiner admits that the claimed
limitation relating to resolution and margins is not taught in
Dennis. We are in agreement with Appellants since
anticipation can not be established by an assertion of
obviousness as to a particular claimed feature. "Inherency
and obviousness are distinct concepts." W. L. Gore &
13
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