Ex parte MCINTYRE et al. - Page 5




          Appeal No. 97-2710                                                          
          Application No. 08/402,080                                                  


          obvious to one of ordinary skill in the art to connect the fax              
          in WinFax to an external telephone line, and to connect the                 
          computer and printer connected to WinFax to an external data                
          communications line to receive print jobs.  After all, it is                
          well known in the art that an     E-mail message sent to the                
          WinFax computer will be printed by the printer.  The                        
          examiner’s conclusion (paper number 5, page 3) that in a                    
          certain mode “incoming faxes are necessarily stored in a job                
          memory” is agreed to by appellants (Brief, page 10).  We do                 
          not, however, agree with any of the examiner’s conclusions                  
          (paper number 5, page 4) concerning the claimed controllers,                
          particularly the third controller.  Windows and WinFax have a               
          controller or controllers, but no evidence in the record                    
          supports the examiner’s conclusion (paper number 5, pages 3                 
          and 4) that a “third controller” controls WinFax when “the fax              
          modem has no access to the printer.”  In view of the lack of                
          such evidence, we agree with the appellants (Brief, pages 11                
          and 12) that the obviousness rejection must be reversed                     
          because WinFax neither teaches nor would have suggested the                 
          specifically claimed functions performed by the third                       
          controller.                                                                 
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