Ex Parte ASAI et al - Page 7



                    Appeal No. 2002-2155                                                                                                                                  
                    Application No. 09/003,276                                                                                                                            

                    automatically preforms inversion, folding and stapling of a print                                                                                     
                    sheet to conceal the printed confidential image.  The folding                                                                                         
                    mode selection key (242) of Kanou does not perform that same                                                                                          
                    function, and is not an equivalent of appellants' confidential                                                                                        
                    mode selection key (120).                                                                                                                             

                    Since we have determined that the teachings which would have                                                                                          
                    been fairly derived from Kanou would not have anticipated the                                                                                         
                    subject matter of claim 1 on appeal, we must refuse to sustain                                                                                        
                    the examiner's rejection of that claim under                                                                                                          
                    35 U.S.C. § 102(b).  It follows that the examiner's rejection of                                                                                      
                    claims 3, 5 through 7 and 9, which depend from claim 1, will also                                                                                     
                    not be sustained.                                                                                                                                     

                    With regard to the examiner's rejection of claims 8 and 10                                                                                            
                    through 17 under 35 U.S.C. § 103(a) based on the collective                                                                                           
                    teachings of Kanou and Higashio, we observe that the examiner has                                                                                     
                    relied upon Higashio for a teaching of a stamping unit (200A) and                                                                                     
                    urged that it would have been obvious to one of ordinary skill in                                                                                     
                    the art at the time of appellants' invention to use the stamping                                                                                      
                    unit disclosed by Higashio as a reverse side image forming means                                                                                      
                    on the image forming system disclosed by Kanou in order to stamp                                                                                      
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