Appeal No. 1997-2988
Application No. 08/045,499
the printer 9. Accordingly, the Figure 4 embodiment of Hirose
lacks a paper path with both a scanner and a printer adjacent
to it or on it. The reference to Makihara does not provide
any discussion concerning the relative locations of the
scanner 3 and the printer 4 with respect to any paper path.
Even if such information were provided in Makihara, the
relevance of this reference eludes us in that we agree with
the appellants (Brief, page 7) that “Makihara utilizes full
size scanners, wherein the entire document is scanned at one
time.” In summary, the differences between claims 1 through 3
and 5 through 10 and the teachings and suggestions of Makihara
and Hirose are too numerous for the examiner to fashion a
plausible combination of their teachings. In any event,
nothing is found in the answers that convinces us that the
examiner has presented a prima facie case of obviousness based
upon the combined teachings of Makihara and Hirose. As a
result thereof, the obviousness rejection of claims 1 through
3 and 5 through 10 based upon the teachings of Makihara and
Hirose is reversed.
Turning next to the obviousness rejection of claims
1 through 3 and 5 through 12 based upon the teachings of
8
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