Ex parte EOM et al. - Page 5

              Appeal No. 1998-0938                                                                                       
              Application 08/377,532                                                                                     

              989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when determining obviousness,                     
              the claimed invention should be considered as a whole; there is                                            
              no legally recognizable 'heart' of the invention."  Para-Ordnance Mfg. v. SGS Importers                    
              Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied,                      
              519 U.S. 822 (1996), citing W. L. Gore & Assocs., Inc. v. Garlock,  Inc.,  721 F.2d 1540,                  
              1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).                               
                     On pages 7 through 20 of the brief, appellants point out that all the independent                   
              claims recite either an apparatus or method in which the printer is set in one of a print                  
              mode or a facsimile mode.  The claims further recite that if the printer is set in the print               
              mode, the facsimile data received from either a remote computer or a remote facsimile                      
              machine is directly printed on printable medium.  If the printer is set in a facsimile mode,               
              the received facsimile data is transferred to the host computer for a visual display on a                  
              computer screen.  Appellants argue that neither Seo nor Koshiishi teaches the print mode                   
              or the facsimile mode as recited in these claims.                                                          
                     Upon our review of Seo and Koshiishi, we fail to find that the examiner has provided                
              evidence of a printer that is capable of being set in a print mode or a facsimile mode and                 
              operate as set forth in appellants' claims.  We note that there is no teaching in Seo to                   
              transfer image data received from a host computer for either direct printing or                            


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