Appeal No. 1999-0009
Application 08/648,386
memory.” Accordingly, the claims require inter alia preventing a
facsimile machine from printing when a predetermined number of
sequential lines of black data have been stored in its memory.
The examiner fails to show a teaching or suggestion of the
limitations in the applied prior art. "’A prima facie case of
obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.’" In re Bell, 991 F.2d
781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, although Uetama teaches “[a] facsimile apparatus
capable of economizing the recording paper[,]” col. 1, ll. 8-9,
the reference does not prevent the apparatus from printing when a
predetermined number of sequential lines of black data have been
stored in its memory. To the contrary, Uetama prints marginal,
compressed data when a predetermined number of sequential lines
of blank data have been received by the apparatus. Specifically,
“in the case where a predetermined number of lines of total blank
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