Appeal No. 2002-1735 Page 7
Application No. 08/903,878
(Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992)). "'A prima facie case of obviousness is established when the
teachings from the prior art itself would . . . have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, the examiner admits that "Takayanagi et al. do not explicitly state that the
fixed storage of a printer's buffer memory has a capacity smaller than a quantity of one
frame of the image data. . . ." (Examiner's Answer at 3.) Furthermore, we are
unpersuaded that the addition of Hattori cures the admitted deficiency of Takayanagi.
"[A] prior patent must be considered in its entirety, i.e., as a whole, including portions
that would lead away from the invention. . . ." Panduit Corp., 810 F.2d 1561, 1568,
1 USPQ2d 1593, 1597 (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983)). Here, although the first passage of
Hattori cited by the examiner discloses that a "video band buffer has a fixed memory
capacity for 128 raster scan lines (i.e., about 1/20 of a page)," col. 1, ll. 47-49, the
passage explains that the capacity is expandable. Specifically, the buffer "can be
expanded beyond this capacity when needed." Id. at ll. 49-50 (emphasis added). For
their part, the second and third passages relied on by the examiner also teach
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