Appeal No. 2003-1966 Page 4
Application 08/789,959
The Rejection Based Upon Moriyama And Okazaki
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The examiner is of the view that all of the subject matter recited in claim 1 is
disclosed or taught by Moriyama except for the plurality of ink supply containers (6Y,
6M, 6C and 6Bk) being separately replaceable and the width of each separately
replaceable ink supply container parallel to the scan axis of the printer being less than
the width of the non-print zone portion minus a sum of widths of the housing of the
other separately replaceable ink supply containers. For these teachings the examiner
looks to Okazaki, which discloses in Figure 3 a plurality of independent ink cartridges
that can be separately replaced when the ink within each has been used. According to
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