Appeal No. 2001-2198
Application 09/378,802
Turning to the obviousness rejection of claim 9, Taylor
discloses a schematic inkjet printer service station in Fig. 2.
In this embodiment, pallet 62 is moved in direction 66 to service
the printer heads. This direction is orthogonal to the direction
of printhead movement 42 shown in Figure 1. The examiner
advances two theories of obviousness based on Taylor. First, in
the final rejection, the examiner states that as is conventional
in this art either the printhead must be moved relative to the
service area, or the service area must move relative to the
printhead to effect cleaning. Although, Osborne moves the
service area, the examiner is of the view that it would have been
obvious to move the printhead instead, citing In re Malcolm, 129
F.2d 529, 54 USPQ 235 (CCPA 1942). Used in this manner, the
Malcolm case amounts to a per se rule of unpatentability. The
use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention--including all its
limitations--with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and the
Board.
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