Appeal No. 2001-1336
Application No. 08/736,042
In response to Appellant’s arguments, the Examiner asserts
that Kimura teaches that the transfer voltage should be adjusted
when a user determines the use of transparencies and alerts the
printer (answer, page 7). Furthermore, the Examiner refers to
tray 7 of Kimura as the straight path tray for special recording
media which requires adjusting of the transfer voltage when tray
7 is used or when the type of the paper is sensed as special
(id.). The Examiner concludes that the claimed invention “does
not differ technically” from the prior art (id.).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). The Examiner must not only
identify the elements in the prior art, but also show “some
objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead the
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