Appeal No. 1997-0411 Page 6
Application No. 08/441,658
Here, the examiner does not assert that the features of
Eight-in-One may be bodily incorporated into the structure of
Print Shop. Instead, he asserts that the combined teachings
of the references would have suggested to one of ordinary
skill in the art the appellants’ invention. Next, we address
the appellants’ second argument, which attacks the
persuasiveness of the examiner’s assertion.
Second, the appellants argue, “as in ‘The Print Shop’,
the ‘Define Menu’ [of Eight-in-One] provides ... no teaching
or suggestion ... for enabling the user to designate ... the
paper size, paper direction and printing direction ....”
(Appeal Br. at 7 (emphasis omitted).) The examiner replies,
“it would have been readily obvious that the ‘Define Menu’ of
‘Eight-In-One’ would add flexible [sic] to ‘Print Shop’ to
enable not only the direction of paper to be changed but also
fonts to be changed.” (Examiner’s Answer at 7.) We agree
with the appellants.
Independent claim 12 specifies in pertinent part the
following limitations:
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