Appeal No. 96-3340
Application 08/363,087
view of Kashimura as applied against claims 1 and 10 and further in view of Koitabashi.
Appellants grouped all of the claims together as one group (see brief at page 5) and
provided no separate argument. (See brief at page 8.)
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
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appellants, we make reference to the brief and answer for the details thereof.
OPINION
After a careful review of the evidence before us we disagree with the Examiner that
claims 1, 10-13, 18 and 19 are properly rejected under 35 U.S.C. § 103 and we will not
sustain the rejections of claims 1, 10-13, 18 and 19 .
As a consequence of our review, we make the determinations which follow.
Turning to the rejection of independent claim 1, we find that the Eaminer has not
met the burden of setting forth a prima facie case of obviousness in rejecting claim 1.
As pointed out by our reviewing court, we must first determine the scope of the claim.
"[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). The claim sets forth a specific relationship
between the size of scavenger member and the free space, "wherein ink is flowable
4 The Examiner responded to the brief with an Examiner's answer mailed April 16, 1996, (Paper
No. 11). We will refer to this Examiner's answer as simply the answer.
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