Appeal No. 95-3537
Application 08/078,533
acknowledges that AMa does not disclose printing a desensitizer composition@ (answer, page 7)
and has relied on the admissions in appellants= specification (page 22) only to show that the
desensitizer materials used in the desensitizer compositions of the claims were known in the art.
Accordingly, since the desensitizing compositions were not taught by the applied
combination of references, the burden is on the examiner to enter into the record evidence and/or
scientific reasoning explaining why one of ordinary skill in this art would have modified the
desensitizing compositions taught by Miyamoto et al. and Fredrickson in order to arrive at the
aqueous desensitizing compositions specified in the appealed claims in order to make out a prima
facie case of obviousness. In the absence of such evidence and/or scientific reasoning, it is
manifest that the only direction to appellants= claimed invention as a whole on the record before us
is supplied by appellants= own specification.
The examiner=s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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)
CHARLES F. WARREN )
Administrative Patent Judge )
Ronald Zibelli
Xerox Corporation
Xerox Square 20A
Rochester, NY 14644
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