Application No. 2006-3067
Appeal No. 09/952,953
Appellants respond that the examiner has merely attempted to show that each of
the differences between the claimed invention and the prior art would have been
individually obvious rather than considering the claimed invention as a whole.
Appellants essentially argue that it was error by the examiner to conclude, after arriving
at the first combination of references based on a first advantage, that it would have
been obvious to add a third reference based on a second advantage, and then add a
fourth reference to gain a third advantage. Appellants assert that there must be a
motivation for the overall combination, not just for each succeeding combination [reply
brief, pages 1-4].
We will sustain the examiner’s rejection of claims 21-23, 25-28, 30-33, 35 and 36.
We are not persuaded by appellants’ argument that the rejection fails to consider the
claimed invention as a whole. We are also of the view that the applied references teach
more than the examiner has relied on. For example, Nomura appears to teach
everything for which the admitted prior art is relied on. Specifically, Nomura teaches a
combination scanner and printer with an interface and control panel. Nomura displays a
first menu between the display portions 701 and 801 that includes the user selectable
options “send” (print or fax) and “copy.” Selection of the “copy” function results in a
second menu display 801 having at least a scale function (copy ratio), while selection of
the “print” or “fax” functions results in a second display menu 802 having at least email
and fax functions. Although second menus 801 and 802 partially overlap each other
[see Figures 5, 7, and 9-12], they do not partially overlap the copy and print buttons of
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