Ex parte PARIKH et al. - Page 7




          Appeal No. 1997-2988                                                        
          Application No. 08/045,499                                                  


          the distance between the scanner and the printer is less than               
          the length of the paper.  The Figure                                        
          18 embodiment also uses rollers to move the paper by the                    
          printer and the scanner.  Nothing in claims 11 and 12 requires              
          the scanner to interact with the paper in the paper path.                   
               In view of the foregoing, we find that all of the                      
          limitations of apparatus claims 11 and 12 read directly on the              
          Figure 11 and Figure 18 embodiments of Hirose.  In affirming a              
          multiple reference rejection under 35 U.S.C. § 103, the Board               
          may rely on one reference alone without designating it as a                 
          new ground of rejection.  In re Boyer, 363 F.2d 455, 458, n.2,              
          150 USPQ 441, 444, n.2 (CCPA 1966); In re Bush, 296 F.2d 491,               
          496, 131 USPQ 263, 266-67 (CCPA 1961).  Thus, the obviousness               
          rejection of claims 11 and 12 is sustained based upon the                   
          teachings of Hirose considered alone.                                       
               The remainder of the claims on appeal require interaction              
          between the scanner and the paper in the paper path.  As                    
          indicated supra, the scanners in the two noted embodiments of               
          Hirose do not interact with the paper in the paper path.  In                
          the Figure 4 embodiment of Hirose, there exists a first paper               
          path P -P  for the scanner 8, and a second paper path P -P  for3 4                                         1  2                  
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