Appeal No. 96-3998
Application No. 08/344,397
After careful review of the references of record, we are in
agreement with Appellants’ stated position in the Brief. The
Examiner offers no indication as to where such limitation is
found in the prior art nor offers any analysis as to the
obviousness of such limitation and, in fact, has chosen to
completely ignore Appellants’ arguments as to this particular
limitation. In view of the above, we are constrained to hold
that, on the record before us, the Examiner has failed to
establish a prima facie case of obviousness of independent
claim 16 based on Ricoh or any of the other applied prior art.
We further note that even assuming, arguendo, that the
recited limitations of claim 16 are found in various ones of
the prior art references, the Examiner’s rejection is totally
lacking in any rationale as to how and why the skilled artisan
would modify the prior art to arrive at the claimed invention.
We are left to speculate why one of ordinary skill would have
found it obvious to modify Ricoh or any of the other applied
prior art to make the combination suggested by the Examiner.
The only reason we can discern is improper hindsight
reconstruction of Appellant’s claimed invention.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007