Ex parte EOM et al. - Page 6

              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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