Appeal No. 2001-2697
Application No. 08/770,048 Page 5
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
We begin with independent claim 2. The examiner's position
(answer, page 5) is that "McDonald does not specifically teach
separately scanning the same original document at the different
resolutions for image composition on the display." To overcome
this deficiency in McDonald, the examiner turns to Zelten and
well known prior art. The examiner asserts (answer, page 6) that
“it would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine McDonald and Zelten
such that both low resolution image and high resolution image are
generated by scanning the document a plurality times, a prescan
before the image composing and a final scan after the image
composing.” The examiner's motivation (id.) is that “during
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