Appeal No. 1999-2851
Application No. 09/127,347
The examiner relies upon logic and sound scientific principle to suggest the
obviousness of keeping the diameter of the take-up spool substantially unchanged. (See
final rejection at page 2.) While we agree with the examiner that logic and sound scientific
principles are appropriate motivations for modifications of prior art teachings, we find
nothing in Hevenor alone which would have suggested to the skilled artisan to look to logic
and sound scientific principles to motivate change in the length of the ink web to keep the
cassette within the claimed limitations. The examiner cites a teaching of a Japanese
patent (Jp-02-069276) in the argument section of the final rejection to identify the
recognition of the problem of diameter size and tension. Here, we disagree with the
examiner’s reliance upon a teaching which is not applied against the claim. As set forth in
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970), “[w]here a
reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there
would appear to be no excuse for not positively including the reference in the statement of
rejection.” Furthermore, the examiner maintains that this reference teaches the control of
the drive source rather than maintaining the take-up spool in any specific relationship. The
examiner maintains that the complicated system of the Japanese patent is not at issue
here. We disagree with the examiner. If the teachings of the reference are to be applied
by the examiner, then the reference as a whole and what it teaches is at issue. Since the
examiner does not apply the complete teaching of the reference, it is clear that the
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