Appeal No. 1999-1398 Page 5
Application No. 08/559,496
ordinary skill in the art without any specific hint or suggestion in a particular reference. See
In re Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the
references themselves are concerned, we are bound to consider the disclosure of each for
what it fairly teaches one of ordinary skill in the art, including not only the specific teachings,
but also the inferences which one of ordinary skill in the art would reasonably have been
expected to draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Independent claim 43 is the broadest claim before us, and it stands rejected as
being unpatentable over the teachings of seven references, some of which are considered
as alternatives. The primary reference is Schmitt, and the examiner is of the view that
Schmitt discloses all of the subject matter recited in claim 43 except that the first nip
downstream of the first transfer means (N-101 in Figure 2) is not an extended nip, and the
next roll downstream of the first nip (117 in Figure 2) is a suction roll that has no pressure
roll opposite it to create the claimed pressure nip. The examiner points out that Wicks
teaches it was known in the prior art at the time of the appellant’s invention to utilize
conventional roll nips and extended roll nips as alternatives, and concludes that one of
ordinary skill in the art therefore would have found it obvious to replace the conventional roll
nips disclosed by Schmitt with extended roll nips, in view of the teachings of Wicks. In this
regard, the examiner further cites, “if necessary,” DE ‘404 and G ‘340 as examples of the
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