Appeal 2006-2462
Application 09/790,856
Even though we sustain the rejection of these claims in light of the
collective teachings of the references relied upon, we do not do so based
upon the Examiner’s persistently argued reliance upon the per se rule of
unpatentability and duplication of parts as in In re Harza, 274, F.2d 669, 124
USPQ 378 (CCPA 1960). The Examiner relies upon this line of reasoning
and this precedent in both the statement of the rejection and as well as the
responsive argument at pages 7 and 8 in the Answer. For his part, Appellant
presents persuasive arguments and case law at pages 5 through 7 of the
principal Brief on appeal and again at pages 1 through 3 of the Reply Brief
that such a per se rule of patentability is legally incorrect.
Notwithstanding these considerations, in addition to the identified
teachings we found earlier in Tanaka and Brady as to their proper
combinability within 35 U.S.C. § 103, we find compelling teachings of the
additionally noted features recited in independent claims 18 and 52 on
appeal. We therefore find plainly incorrect Appellant’s assertion at the
bottom of page 5 of the principal brief on appeal that “neither Tanaka nor
Brady even remotely suggests the provision of plural identification devices
mounted to a data cartridge, as recited in claim 18.” From our study of
Tanaka, we agree that this reference does not teach or otherwise contemplate
plural integrated circuit cards 1 the (ID devices of the claims) associated
with each cassette 2 and does not contemplate or otherwise teach plural
readers 3 for each storage bin 4 (or claimed slot).
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