Appeal No. 1998-2800 Page 7
Application No. 08/572,505
prior art and the lithographic printing plate support that was
of concern to Uesugi (brief, pages 12-18 and reply brief,
pages 1-5). In this regard, we note that the examiner's
comment that "both references are concerned with light
sensitive coating on metal substrates and that the problems
with this process would be a concern to both references"
(answer, page 7) is conclusionary. The mere fact that the
process of Uesugi may be viewed as being subject to
modification to reflect features of the claimed invention does
not make such modification obvious unless the examiner has
fully explained how the desirability of such modification is
particularly suggested by the applied prior art. Here, the
explanation of motivation offered in the answer by the
examiner is not persuasive since the nature of the proposed
modification of Uesugi is not made clear by the examiner and
the examiner has not pointed to the specific disclosure in
Uesugi and the other applied prior art which particularly
suggests the modification of Uesugi that would be necessary to
arrive at the claimed process.
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness. Because we
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