Appeal No. 2001-2526
Application No. 08/823,183
and a desire to limit movement in that manufacturing environment. In the system and
environment of Nakamura, there is no such motivation, and we find that the examiner
has not addressed this change. The examiner concludes at page 10 of the answer that
McJohnson teaches the details of the scanner and that McJohnson is not an isolated
teaching of the details of the scanner. While we agree with the examiner, it is the
details of McJohnson that we are limited to address in the combination. If the examiner
desired additional details and motivations, then the examiner is required to apply them
in the combination so that appellants may clearly address them and attempt to rebut
their teachings and the combination thereof .
The examiner seems to suggest that the height of the scanner is not shown in
Figure 9 of Nakamura and Figure 8 more clearly shows the height of the scanner. With
the specific placement of the scanner unclear, the examiner concludes the discussion
by stating that both Figures are schematics that are subject to obvious variations and
are equivalent configurations. Here, we are again left wondering what was the
examiner’s point, and it appears that it is the examiner’s predisposition rather than the
teachings of the references that are driving the rejection. Therefore, we agree with
appellants that the examiner has neither set forth an adequate statement of motivation
for the combination of teachings nor a convincing line of reasoning for the combination
of teachings of Nakamura and McJohnson. Therefore, the examiner has not set forth a
prima facie case of obviousness, and we will not sustain the rejection of independent
claims 1, 9, 13, and 14 and their respective dependent claims.
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