Appeal No. 95-4147
Application 08/151,454
its ability to resist penetration of inkjet ink that
is later applied. This ink resistance is necessary, so
that the inkjet ink will not coat the silicone
surface. (Specification, page 5, lines 24-28).
We determine that one of ordinary skill in this art would
have been apprised of the scope of the phrase “generally being
ink-impermeable” when read in light of the above quotes from
the specification. One of ordinary skill in this art would
have been apprised that the claimed phrase encompasses carrier
layers that are ink-impermeable or permeable to inkjet ink as
long as the inkjet ink does not reach and coat the silicone
release layer surface. Accordingly, the rejection of claims
1, 15 and 20 under the second paragraph of § 112 is reversed.
B. The Rejections under § 103
All of the examiner’s rejections under § 103 are based on
Pointon alone or in view of various secondary references.
Accordingly, our opinion will first focus on Pointon.
“[T]he examiner bears the initial burden, on review of
the prior art or on any other ground, of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
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