Appeal No. 1997-1004
Application No. 08/095,479
there is no teaching or suggestion of a pressure in Suzuki sufficient to
achieve such penetration. Suzuki relates to a method of removing excess
recording liquid remaining on the recording medium to a roller member.
Therefore, this method, does not relate to the present technique of forcibly
penetrating ink into paper. Appellants advise that it appears that ink
penetrated in paper by Suzuki would be only a spontaneously absorbed
portion (not including a forcibly penetrated portion) as in conventional
techniques. (Emphasis in original).
(See supplemental reply brief at page 5.) We agree with appellants. Appellants have
presented evidence of the operation of the roller member used to remove excess liquid ink
as taught by Suzuki. (See Hashimoto declaration at pages 2-4.) The Hashimoto
declaration states that the pressure applied by spring 15 in the Suzuki reference is more
likely than not to be “close to zero” where no blurring occurs. The examiner has not
adequately rebutted this evidence presented by appellants, The examiner merely states
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that the “spring pressure would inherently be at least 1 Kg/cm[ ] in order to form a removing
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contact. It is noted that a pressure of 1 Kg/cm[ ] is approximate[ly] atmospheric pressure.
Thus, the claimed application of pressure is suggested by Suzuki.” (supplemental answer,
page 2). We disagree with the examiner. The Federal Circuit recently discussed
inherency and whether an aspect of a claimed invention would be necessary from the
disclosure in In re Robertson,169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The Federal Circuit stated “[t]o establish
inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is
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