Appeal No. 95-4118
Application 07/600,799
appellants in their reply brief, and restated in their second supplemental reply brief, filed May 12, 1995
(Paper No. 21), and reaches the issues of the use of fibrous, carbonaceous material and the matter of
color or translucency. Indeed, as we noted above, Hess is relied on by the examiner in this instance in
the same manner as in the second ground of rejection which we consider below. It is further
inescapable from a complete review of Friend that this reference contains disclosure that is clearly and
specifically applicable to appealed claim 1, as we discuss below in remanding this application to the
examiner, which disclosure the examiner could not have avoided reviewing in reaching the disclosure
concerning inks. Such use of references not included in the statement of the rejection is clearly
impermissible. See In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n.3 (CCPA 1970);
compare Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993).
Therefore, we have considered the issue of the obviousness of the claimed composition
encompassed by the appealed claims with respect to the applicability of Tennent alone, based solely on
the evidence in that reference and the examiner’s apparently unsupported allegations of matters
“notoriously well known in the art.” Even if the examiner’s allegations are supported, we find no reason
on this record why one of ordinary skill in this art would have been motivated to combine such
knowledge with the teachings of Tennent to arrive at appellants’ coating composition, in the absence of
appellants’ disclosure. See generally, In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988) (“Both the suggestion and the reasonable expectation of success must be found in the prior
art and not in applicant’s disclosure.”); In re Horn, 203 USPQ 969, 971 (CCPA 1979) (“[S]implicity
and hindsight are not proper criteria for resolving the issue of obviousness.”); Ex parte Levengood, 28
USPQ2d 1300, 1301-02 (Bd. Pat. App. & Int. 1993) (“At best, the examiner’s comments regarding
obviousness amount to an assertion that one of ordinary skill in the relevant art would have been able to
arrive at appellant’s invention because he had the necessary skills to carry out the requisite process
steps. This is an inappropriate standard for obviousness. . . . That which is within the capabilities of one
skilled in the art is not synonymous with obviousness. Ex parte Gerlach, 212 USPQ 471 (Bd. App.
1980).”).
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