Ex Parte YAMANAKA et al - Page 11




         Appeal No. 2003-1883                                                       
         Application No. 08/953,488                                Page 11          


              From our review of the record, we agree with the examiner             
         that the portions of Mandel relied upon by the examiner show the           
         limitations of claim 18.  We add that Mandel (col. 28, lines 37-           
         43) discloses that when the print job is redirected to another             
         bin, the user is notified.  In sum, we find that Mandel discloses          
         the limitations of claim 18.  Accordingly, the rejection of claim          
         18 under 35 U.S.C. § 102(e) is affirmed.                                   
              We turn next to the rejection of claim 19.  Appellants                
         assert (brief, page 10) that the portions of Mandel relied upon            
         by the examiner do not show each and every limitation of claim             
         19.  However, appellants do not set forth any limitations of the           
         claim that they consider to not be met by Mandel.  From                    
         appellants' response, we find that appellants have not complied            
         with the procedural requirements of 37 CFR § 1.192(c)(8)(iii).             
         From our review of the record, we agree with the examiner                  
         (answer, page 5), who argues to the effect that upon receiving a           
         message to remove the print job from the bin, and removing the             
         print job, no further messages will be sent to the user.                   
         Accordingly, we are not convinced of any error on the part of the          
         examiner, and find that the examiner has set forth a prima facie           
         case of anticipation of claim 19 that has not been successfully            









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