Ex parte SCHWARZ - Page 6




                 Appeal No. 96-3689                                                                                                                
                 Application 08/325,914                                                                                                            

                         For the same reasons, we also reverse the rejection of claims 1-27 under 35 U.S.C. § 103 over                             

                 Clark.  We find no teaching or suggestion in Clark, and the examiner has not provided any technical or                            

                 scientific reasoning, which would have led a person having ordinary skill in the art to the claimed recording                     

                 sheet.  In addition, we agree with appellant that Clark is not analogous prior art with respect to the claimed                    

                 subject matter.  We do not find Clark to be in the field of appellant’s endeavor, i.e., recording sheets for                      

                 receiving images of an aqueous ink, or reasonably pertinent to the particular problem with which the                              

                 appellant is concerned.   In re Clay, 966, F.2d 656, 659, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992).                               

                 Accordingly, the examiner’s rejection of claims 1-27 for obviousness is also reversed.                                            

                         In summary, the decision of the examiner is reversed.                                                                     

                                                                 REVERSED                                                                          





                                           CAMERON WEIFFEBACH                         )                                                            
                                           Administrative Patent Judge             )                                                               
                                                                                      )                                                            
                                                                                      )                                                            
                                                                                      ) BOARD OF PATENT                                            
                                           JOAN ELLIS                                 )                                                            
                                           Administrative Patent Judge                )   APPEALS AND                                              
                                                                                      )                                                            
                                                                                      ) INTERFERENCES                                              
                                                                                      )                                                            
                                           THOMAS A. WALTZ                            )                                                            
                                           Administrative Patent Judge                )                                                            
                 CW/kis                                                                                                                            

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