Appeal No. 2005-0052
Application No. 09/192,014
relative persuasiveness of the arguments. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976).
With respect to independent claim 1, the representative
claim for Appellants’ first suggested grouping (including claims
1-6), Appellants’ arguments in response to the Examiner’s
35 U.S.C. § 103(a) rejection assert a failure to establish a
prima facie case of obviousness since all of the claimed
limitations are not taught or suggested by the applied prior art
references. After careful review of the disclosure of Irons and
Xerox in light of the arguments of record, we are in general
agreement with the Examiner’s position as stated in the Answer.
We find no error in the Examiner’s assertion of obviousness
(Answer, pages 3 and 4) to the skilled artisan of modifying
the document scanning disclosure of Irons by adding Xerox’s
disclosed feature of embedding machine readable information on
documents to enable a service to be performed on a scanned image
of the document. In particular, Appellants’ contrary arguments
that no benefit would accrue to the user of Irons’ system
5
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