Appeal No. 2005-0052
Application No. 09/192,014
although we found no error in the Examiner’s proposed combination
of Irons and Xerox as discussed supra, the Xerox reference is not
necessary for a proper rejection of claim 1 since all of the
claimed elements are in fact present in the disclosure of Irons.
A disclosure that anticipates under 35 U.S.C. § 102 also renders
the claim unpatentable under 35 U.S.C. § 103, for "anticipation
is the epitome of obviousness." Jones v. Hardy, 727 F.2d 1524,
1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In
re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
Accordingly, for all of the above reasons the Examiner’s
35 U.S.C. § 103(a) rejection of representative claim 1, as well
as claims 2-6 not separately argued by Appellants and which fall
with claim 1, is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claims 11, 14, and 15 based on
the combination of Irons and Barton, we sustain this rejection as
well. We note, initially, that, while previously discussed
appealed claim 1 is directed to a service performed on an image
of a hard copy document, claims 11, 14, and 15 are directed to a
service performed on the hard copy document itself. As with the
Examiner’s rejection of claim 1 based on the combination of Irons
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