Ex parte STEIN et al. - Page 8




          Appeal No. 1998-0183                                                        
          Application No. 08/413,040                                                  


          claimed features against the Goss reference (answer, pages 3                
          to 4), the Examiner makes a prima facie case by asserting that              
          “Goss discloses the data as ‘digital’ rather than ‘binary’.                 
          The use of binary data, . . . would be an expedient obvious to              
          one of ordinary skill in the art.”  Appellants present various              
          arguments thereagainst (brief, pages 4 to 9).  However, like                
          the Examiner (answer, pages 6 to 8), we find that claim 12                  
          does not recite  any storage step and the arguments relating                
          to the storage means or steps are not commensurate with the                 
          scope of the claim.  We find no specific arguments rebutting                
          the above prima facie case of obviousness.  Therefore, we                   
          sustain the obviousness rejection of claim 12 over Goss.                    
               With respect to claim 13, Appellants argue (reply brief,               
          pages 2 to 3) that “[t]here is no suggestion in Goss that a                 
          [sic] step[s] of decrypting . . . and transmitting the                      
          decrypted data for printing . . . are to be contained in a                  
          portable housing                                                            
          . . .  . ”  The Examiner contends (answer, pages 4 and 9),                  
          that Goss does teach the concept of placing an                              
          encryption/decryption unit between a facsimile machine and its              
          telephone line and such a unit is of the “connectable” type                 
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