Appeal No. 96-3689
Application 08/325,914
According to the examiner, claims 1-6, 9-15, 18-24 and 27 are anticipated by Clark because
Clark discloses a substrate made of wood pulp fibers as well as synthetic fibers and having a coating
containing water and ammonium laureth sulfate (a surfactant disclosed by appellant on page 16 and in
Example I in the specification). See the final Office action, p. 2, ¶3, paper no. 4.
The invention in Clark is not directed to a recording sheet, but to a pre-moistened wipe for cleaning
hard surfaces. The wipe comprises (i) a substrate which comprises specific proportions of wood pulp
fibers and synthetic fibers and (ii) a cleaning composition which includes water and a surfactant (col. 2, lines
11-54). The substrate disclosed in Clark would meet the requirements of appellant’s claim 1 in that the
substrate could be paper or a polymeric material. The cleaning composition, however, does not appear
to be a coating as required by claim 1. According to Clark, “[t]he pre-moistened wipe of the invention
comprises a flexible substrate comprising a nonwoven fabric which has been treated with a small amount
of a polymeric material and wet-impregnated with a liquid cleaning composition” (col. 3, lines 3-7). Even
if the composition could be construed as being a coating on the substrate, we do not find that Clark
presents a prima face case of anticipation.
It has long been established that the initial burden of establishing a prima facie basis to deny
patentability to a claimed invention rests upon the examiner. Ex parte Levy, 17 USPQ2d 1461, 1463-64
(Bd. Pat. App. & Int. 1990). The factual determination of anticipation requires the disclosure in a single
reference of every element of the claimed invention. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566 , 1567 (Fed. Cir. 1990);
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