Appeal No. 96-2161
Application 08/227,024
First, we agree with appellant that Green would not have suggested to the artisan that
carbonless paper manufactured grain-short should be used in Kraft’s carbonless paper
printing system. Green only suggests that the feeding direction of regular paper can affect
the performance of the copier. We find nothing in Green or Kraft which suggests that
carbonless paper should be manufactured grain-short as recited in claim 1. Second, it
was error for the examiner to ignore appellant’s evidence of nonobviousness as not related
to the transfer process. As we noted above, the feeding of paper is part of the overall
process of copying and unexpected benefits can occur anywhere within the process. The
examiner should have at least considered the results of appellant’s tests on the merits as a
secondary consideration of nonobviousness. Therefore, we also do not sustain this
rejection of claims 1-4 and 8.
With respect to claims 5-7, the examiner adds the teachings of Camis to Kraft alone
or Kraft in view of Green. Since Camis does not make up for the deficiencies noted above
in Kraft alone or Kraft in view of Green, we do not sustain either rejection of claims 5-7
under 35 U.S.C. § 103.
In summary, we have not sustained any of the rejections of the examiner under 35
U.S.C. § 103. Accordingly, the decision of the examiner rejecting claims 1-8 is reversed.
REVERSED
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