Appeal No. 97-1453
Application No. 08/196,672
The examiner's rejection of claim 36 is based on the
rationale that since the claimed additive materials are taught
by appellant's specification to be known prior art compounds,
"it is inherent that these known compounds have at some point
come in contact with a substrate" (page 4 of Answer). Since,
as discussed above, we find that the claim language "[a]
recording sheet for receiving printed images of an aqueous
ink" is a limitation which lends life and vitality to the
claimed subject matter and, therefore, must be given
patentable weight, it follows that we do not agree with the
examiner that the presence of one of the claimed compounds on
a substrate anticipates the claimed recording sheet. To use a
hypothetical analogy for illustrative purposes, if a claim is
directed to a tire comprising a particular rubber composition,
we trust that the examiner would not consider the claimed tire
anticipated by the existence of the claimed rubber composition
on a substrate or in a reaction vessel.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
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