Ex Parte Chung et al - Page 8




              Appeal No. 2005-0090                                                                                          
              Application No. 10/057,025                                                                                    


                     The examiner further maintains that “[t]he appellant [sic] does not provide any                        
              arguments as to why Taub does not teach a funnel-shaped ink manifold or as to why                             
              Taub can not be combined with the other prior art references.”  (See answer at page 7.)                       
              We disagree with the examiner position’s and posturing.  We find that the examiner has                        
              the burden of establishing a prima facie case of obviousness of the claimed invention                         
              in light of the clear admission by the examiner that the teachings of Ramaswami are                           
              deficient alone.  Therefore, the examiner continues to have the burden to establish the                       
              initial showing that the combination teaches the invention as recited in independent                          
              claim 11 or that the prior art as a whole would have fairly suggested the invention as                        
              recited in independent claim 11.                                                                              
                     From our review of the teachings of Figueredo, we find neither embodiment in                           
              Figures 1 or 1A teaches or suggests the use of a manifold that is funnel-shaped in a                          
              silicon substrate.  From our review of the teachings of Taub, we find Taub does disclose                      
              the precise manufacturing of a funnel-shaped ink slot so as to meet the capacity                              
              demands of higher frequency printing, but no teaching that would have suggested a                             
              modification of the teachings of Ramaswami and Figueredo.  We further find that the                           
              examiner has provided individual motivations for each of the incremental additions to                         
              the base teachings of Ramaswami and Figueredo, but we find no overall problem or line                         
              of reasoning as to why it would have been obvious to one of ordinary skill in the art at                      
              the time of the invention to make all of these incremental modifications to the basic                         

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