Appeal No. 96-2161
Application 08/227,024
recited in claim 1. Since the examiner has not properly considered all the recitations of
claim 1, we do not sustain this rejection of claims 1-4 and 8.
The examiner also rejected claims 1-4 and 8 under 35 U.S.C. § 103 based on Kraft
and Green. This rejection was made by the examiner in recognition that it might be
required that all the recitations of claim 1 be considered. Thus, Green is cited by the
examiner as a teaching that it may be desirable in some circumstances to feed grain-short
paper in a copier. The examiner asserts that it would have been obvious to the artisan to
feed the carbonless paper of Kraft grain-short as taught by Green [answer, page 4].
Appellant argues that the Green teachings apply to plain paper copying, and the
artisan would have found no motivation to apply Green’s teachings to the carbonless paper
of Kraft. Appellant notes that the coatings on carbonless paper give the paper properties
which are unpredictable with respect to the properties of the plain paper base sheet [brief,
page 14]. Appellant also repeats his previous argument that the examiner’s obviousness
rejection has been rebutted by an extensive showing of substantially improved results for
the invention and a statement that such results were unexpected. The examiner responds
that appellant’s evidence is not persuasive of patentability because the disclosed benefits
relate to the benefits of feeding grain-short papers through a copier rather than benefits
related to the transfer process itself [answer, page 6].
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