Appeal No. 1999-2572
Application 08/419,678
[brief, pages 5-13].
The examiner responds that he interprets the
disclosure in Chan that the spacing between nozzle arrays is
not limited to the distance of 1 dot row in the paper advance
direction to mean that the distance between nozzle arrays can
be any desired value [answer, page 7]. Appellants respond
that the suggestion in Chan that the printing width is
preferably, but not limited to, 1 dot row apart does not
suggest the obviousness of a distance which is at least twice
a printing width as claimed [reply brief].
We agree with the position argued by appellants. A
reference which suggests that a parameter should be one value,
but does not have to be that value does not conclusively
suggest the obviousness of any other specific value. In order
to support a finding of obviousness, the examiner must explain
why the specific value recited in the claim would have been
obvious in view of the preferable value disclosed in the prior
art. In this case, the examiner has improperly assumed that a
prima facie case of obviousness for every other value besides
the preferable value disclosed by Chan is automatically
established. Thus, the examiner has not established a prima
-7-
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