Appeal No. 97-1453
Application No. 08/196,672
recording material, then the prior art articles also must
function as recording materials" (page 5 of Answer).
The examiner's reliance on In re Swinehart, 439 F.2d 210,
212-13, 169 USPQ 226, 229 (CCPA 1971) is misplaced, since,
here, we are not left to ascertain whether the articles of the
cited references inherently possess the ability to function as
a recording sheet for receiving printed images of an aqueous
ink. Manifestly, we find it reasonable to conclude that
neither the photographic silver halide element of Koike nor
the thermal transfer image receiving sheet of Ueno is intended
to, or capable of, functioning as a recording sheet for
receiving printed images of an aqueous ink. It is well
settled that every claim limitation must be given
consideration in determining patentability under 35 U.S.C. §
102 or 35 U.S.C. § 103, and we agree with appellant that the2
claim language "[a] recording sheet for receiving printed
images of an aqueous ink" is a meaningful limitation which
lends life and vitality to the claimed invention.3
2 In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789,
791 (CCPA 1974).
3 Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81
(CCPA 1951).
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