Appeal No. 1998-0938
Application 08/377,532
for transmission to a remote facility such as a remote facsimile machine or remote
computer or to transfer image data received from either a remote computer or a remote
facsimile machine to a host computer in dependence upon whether the printer is set in one
of a print mode or a facsimile mode as defined by appellants' claims. Furthermore, we
agree with the examiner that Koshiishi teaches four separate modes of operation of a
working PC in conjunction with a facsimile machine. However, there is no suggestion or
teaching in Koshiishi that would provide a printer system that is operable in either a print
mode or a facsimile mode as defined by appellants' claims.
We are not inclined to dispense with proof by evidence when the proposition at
issue is not supported by a teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). Furthermore, our reviewing court states in Piasecki, 745 F.2d at 1472,
223 USPQ at 788 the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ
459 (1966) focused on the procedural and evidentiary processes in reaching
a conclusion under section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual basis for its rejection of
an application under sections 102 and 103". In re Warner, 379 F.2d 1011,
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