Appeal No. 1997-2499
Application No. 08/228,449
The Method Claims
“[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.” See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The
examiner relies upon the admitted prior art on pages 1 and 2
of the specification. We find that the admitted prior art
teaches a near infrared erasable dye, which decomposition is
promoted under the presence of an appropriate catalyst such as
a tetra butyl ammonium butyl triphenyl borate. The admitted
prior art further teaches that the infrared erasable dye is
decomposed due to such a catalyst by irradiation of near
infrared rays thereby erasing the recording agent.
The claimed subject matter requires process steps of
“varying a feeding speed of the recording medium in accordance
with a temperature change.” It is the examiner’s position
that since the claims do not specify any particular speed or
temperature change, the claimed limitation encompasses a
condition wherein neither speed nor temperature are changed.
Hence the process claims need not be disclosed by the art of
record. See Final Rejection, page 6. We disagree. The
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