Appeal No. 96-2161
Application 08/227,024
of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In applying Kraft alone, the examiner takes the position that the recitation in claim 1
that the carbonless paper is manufactured grain-short is an apparatus limitation which is
entitled to little patentable weight in the method of claim 1 [answer, pages 3-4]. Appellant
argues that he has provided substantial evidence to the effect that the form of the paper
provides substantially new and unexpected results [brief, pages 12-13]. We will not sustain
this rejection because the examiner has improperly ignored recitations in the claim.
In a method claim all aspects of each step must be fully considered. We cannot agree
with the examiner that the step of transferring an image onto one type of paper is the same
as transferring the image onto another type of paper. The method includes performing the
transferring step using a specific type of paper, and since that paper forms part of the step,
it must be considered for purposes of applying prior art. The examiner argues that the use
of grain-short paper does not affect the transfer process, but rather, only affects the sheet
feeding aspects of the invention. We find no merit in the examiner’s distinction of where
the improvement takes place. The claimed method of transferring an image includes
everything that takes place between the placement of an original and the creation of a
copy. The feeding of sheets for receiving the copies is part of this overall process.
Therefore, the improvements noted by appellant are clearly part of the overall process
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