Appeal No. 1997-2988
Application No. 08/045,499
Makihara and Vollert, we find that the teachings of Vollert
add very little to the irrelevant teachings of Makihara. When
the scanner 6 is used in a facsimile mode, all of the sheet 11
is scanned (column 5, line 67 through column 6, line 3), and
when the scanner 6 is used in a copier mode, the entire sheet
is scanned (column 6, lines 12 through 29). The claimed
requirement that the scanner be upstream along the paper path
from the printer can never be met by Vollert because the
scanner 6 and the printer
4 are mounted in a side-by-side arrangement (column 6, lines
29 through 36; Figure 2) (Reply Brief, pages 5 and 6). In
summary, the obviousness rejection of claims 1 through 3 and
5 through 12 based upon the teachings of Makihara and Vollert
is reversed because we agree with appellants’ argument (Reply
Brief, page 6) that “[c]ombining Makihara with Vollert to
achieve Applicants’ invention will not work.”
DECISION
The decision of the examiner rejecting claims 1 through
3 and 5 through 12 under 35 U.S.C. § 103 is affirmed as to
claims 11 and 12, and is reversed as to claims 1 through 3 and
5 through 10. Accordingly, the decision of the examiner is
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