Ex parte DEWEY - Page 7

          Appeal No. 1998-0488                                                        
          Application No. 08/496,234                                                  

          "experimentation."  In re Wands, 858 F.2d 731, 736-37, 8                    
          USPQ2d 1400, 1404 (Fed. Cir. 1988).                                         
          When we apply the above-noted case law to the facts of                      
          this case, we cannot escape the conclusion that the examiner                
          has failed to support his position that the disclosure in this              
          application is insufficient to support the claimed invention.               
          The determination of what constitutes undue experimentation in              
          a given case requires the application of a standard of                      
          reasonableness, having due regard for the nature of the                     
          invention and the state of the art.  In our view, every step                
          and means recited in the appealed claims is essentially the                 
          same as set forth in the applied prior art except that the                  
          claimed invention makes decisions based on a process black                  
          registration mark rather than some other form of registration               
          mark.  The examiner’s position appears to suggest that since                
          the claimed invention is alleged to be different than the                   
          prior art, then the prior art teachings cannot support the                  
          claimed invention.  The error in the examiner’s position,                   
          however, is that the steps of forming registration images,                  
          examining registration marks, generating error signals, and                 
          adjusting printing stations for example, are all performed in               

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