Ex parte UCHIYAMA - Page 5




          Appeal No. 1997-3062                                                        
          Application No. 08/207,370                                                  

          intercommunication to place the printer in a ready state and                
          reduce its warm-up time” [brief, page 7].  Again, appellant                 
          has identified no claim language directed to the argued                     
          “intercommunication” and placing the printer in a ready state               
          to reduce its warm-up time.                                                 
               With regard to the computer/printer combination argument,              
          the examiner admits that there is no explicit mention of a                  
          printer in Mese which is why the examiner relies on the                     
          ordinary skill of the artisan faced with Mese’s teaching of a               
          generic “controlled object” and Nakanishi’s teaching of a                   
          printer which may be used as a controlled object.  The fact                 
          that Nakanishi is “not concerned with two separate                          
          interconnected components, such as a computer and printer,” as              
          argued by appellant [brief, page 8], is not controlling.                    
          Nakanishi is cited merely as an example of a printer which                  
          might be employed as the “controlled object” in Mese.                       
          However, in our view, Mese, itself provides enough suggestion               
          to the skilled artisan to provide a printer as the controlled               
          object.  Since Mese clearly shows the combination of a                      
          computer and a “controlled object,” and the skilled artisan                 
          would have recognized the use of a printer for such a                       

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