Appeal No. 2002-0146
Application No. 09/110,128
suggestion or motivation in the applied prior art is not alone
determinative. The prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688,
692-693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc)
(overruling in part In re Wright, 848 F.2d 1216, 1220, 6 USPQ2d
1959, 1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991).
Under the facts of this case, the prior art would have suggested
moving the heating array downstream from the center of the platen
even though the prior art moves the heating array in order to
solve a different problem than the problem disclosed by
appellant.
Thus, Iwakawa discloses moving the heating array
downstream by 0.1-0.3 mm whereas claim 1 recites moving the
heating array downstream by 0.2-0.8 mm. The range disclosed in
Iwakawa, therefore, overlaps with the range of claim 1. As noted
by the examiner, the overlapping of ranges is sufficient to
establish a prima facie case of obviousness. Appellant’s
application presents a table in Figure 9 which shows that the
range from 0.2-0.8 mm produces no unacceptable results with
respect to the parameters of image dimension reproducibility,
creasing, and local image omission. Appellant argues that this
table is evidence of the criticality of the claimed range and
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