Ex parte GOTTLING - Page 2




                     Appeal No. 98-1014                                                                                                                                                
                     Application 08/521,013                                                                                                                                            


                                Appellant’s invention pertains to a method and apparatus for erasing an ink carrying layer from                                                        

                     an impervious surface of an image-containing printing form that is usable for offset printing.  An                                                                

                     understanding of the invention can be derived from a reading of independent method claim 1 and                                                                    

                     independent apparatus claim 9, copies of which are found in an appendix to appellant’s brief.                                                                     

                                The references of record relied upon by the examiner in support of rejections under 35 U.S.C.                                                          

                     § 103 are:                                                                                                                                                        

                     Gregory et al (Gregory)                               3,801,369                       Apr. 2, 1974                                                                
                                Roberts                                               3,800,702                       Apr. 2, 1974                                                     

                                IBM Technical Disclosure Bulletin, Vol. No. 8, January 1983, T. A. Bergh et al, pp 4116-                                                               
                     4117.2                                                                                                                                                            

                                In addition, the examiner relies on appellant’s admitted prior art as set forth on pages 2 and 3 of                                                    

                     the specification.                                                                                                                                                

                                Claims 1 and 7-10 stand rejected under 35 U.S.C. § 103 as being unpatentable over                                                                      

                     appellant’s admitted prior art in view of Roberts and Chew.  Claims 2, 5 and 6 stand rejected similarly                                                           

                     rejected with further reliance on Gregory.                                                                                                                        

                                Looking at the rejection of claims 1 and 7-10, the examiner considers (answer, page 3) that                                                            

                     appellant admits on pages 2 and 3 of the specification that                                                                                                       


                                2Both appellant and the examiner refer to this publication by its second named author, Chew.                                                           
                     In order to avoid confusion, we will do likewise.                                                                                                                 

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