Appeal No. 1999-2594
Application No. 08/777,720
The examiner goes on at great length in the answer on pages 6-20 in an attempt to
rationalize the difference between the Fukushima and the claimed invention, but we do not
find the examiner’s arguments persuasive. The examiner maintains that appellant goes
about solving the problem in a tedious and time-consuming manner. (See answer at page
8.) We disagree with the examiner’s statement. As discussed above, we find the problem
to be slightly different and the solution thereto also different. The “more succinct manner”
(id.) of Fukushima is only a recognition by the examiner of a difference which the examiner
has not shown to be obvious in light of the teachings of Fukushima.
The examiner’s conclusion on page 6 of the answer that it would be obvious to
replace the print key with counting the predetermined conditions is unsupported by
evidence in Fukushima or by a convincing line of reasoning why one skilled in the art would
have modified the express teachings of Fukushima. Therefore, we find that the examiner
has not established a prima facie case of obviousness, and we will not sustain the
rejection of independent claim 1. Similarly, we will not sustain the rejection of independent
claims 2, 9, and 10 and their dependent claims 3, 4, 8, and 11-16.
CONCLUSION
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