Appeal No. 2003-1866
Application 08/839,361
of the system of Kristy.3 Although the Examiner has applied the
Fredlund reference to address the digital output medium selection
feature of representative claim 9, it is our opinion, given our
interpretation of the teaching nature of the disclosure of
Kristy, that Fredlund is not necessary for a proper rejection
under 35 U.S.C. § 103(a). Further, while Appellants attack
(Brief, page 14) the addition of the charging system disclosure
of Yamamoto to the Examiner’s proposed combination since, in
Appellants’ view, Yamamoto has no disclosure of recording digital
data, we find this argument unpersuasive since, as pointed out by
the Examiner (Answer, page 9), Kristy clearly provides this
feature. Accordingly, we sustain the Examiner’s obviousness
rejection of representative claim 9, and claims 10-12, 32, and 43
which fall with claim 9 in accordance with Appellants’ claim
grouping, based solely on the combination of Kristy and
Yamamoto.4
3 In considering the language of appealed claim 9, we have given the
broadest reasonable interpretation to the recitation “digital output medium.”
In doing so, we see no reason why the thermal printer 24 in Kristy, which
processes the digital image files from computer 14, would not be considered to
be a digital output medium.
4 The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961);
In re Boyer, 363 F.2d 455, 458, n.2, 150 USPQ 441, 444, n.2 (CCPA 1966).
9
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