Ex parte LEMELSON - Page 6




                     Appeal No. 2000-2232                                                                                                                                              
                     Application 08/483,928                                                                                                                                            


                     a common housing.  In addition, Appellant cites  the                                                 7                                                            
                     Examiner's statement  "The proposed obviousness-type double8                                                                                                                      
                     patenting rejection over the claims of the parent '101 patent                                                                                                     
                     in view of Lemelson '563 does not teach or suggest the claimed                                                                                                    
                     features of supporting the printer in a common housing."                                                                                                          
                                Appellant then asserts  that the sole motivation asserted9                                                                                                       
                     by the Examiner  is that one of ordinary skill in the art at10                                                                                                                                
                     the time of the invention would have thought to add the                                                                                                           
                     printer "so that hard/copies can be given to friends and                                                                                                          
                     relatives for memory."  Appellant states that this motivation                                                                                                     
                     has two problems: First, that the proposed motivation would                                                                                                       
                     not motivate one to include the printer in the same housing,                                                                                                      
                     as a printer coupled remotely would have sufficed.  Second,                                                                                                       
                     that the Examiner merely identifies a benefit of the claimed                                                                                                      
                     invention, which militates in favor of patentability, rather                                                                                                      
                     than a motivation that the Examiner has proven was known to                                                                                                       


                                7Reply Brief, page 5.                                                                                                                                  
                                8 Answer, page 22.                                                                                                                                     
                                9Reply brief, page 5.                                                                                                                                  
                                10  Answer, pages 6 and 9.                                                                                                                             
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