Ex parte GOTTLING - Page 4




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


               ultimate pressure setting for the water jet . . . would have been determined through routine                           

               experimentation” and “would involve no apparent unobviousness.”                                                        

               As to the claim limitation setting forth that the printing form is simultaneously rendered hydrophilic by the          

               pressurized jet, the examiner maintains (answer, page 5) that said limitation “is inherently met by the                

               teachings of the applied references.”                                                                                  

                       For the reasons that follow, we will not sustain this rejection.                                               

                       First, the examiner has not clearly identified what constitutes the admitted prior art that forms              

               the basis of the rejection.  The bulk of the discussion on page 2 of the specification relates to a method             

               of applying an ink carrying layer to a printing forms, and as such would not appear to be particularly                 

               relevant to the claimed method and apparatus for erasing an ink carrying layer.  The paragraph                         

               spanning pages 2 and 3 of the specification indicates to us that it is generally known to regenerate a                 

               printing form by removing the ink carrying layer from the surface of the printing form, but that this may              

               require an additional step of treating the surface of the printing form to again render it hydrophilic.  The           

               first full paragraph on page 3 states generally that known methods of removing ink carrying layers are                 

               cumbersome and subject the printing cylinder to wear, and the second full paragraph on page 3                          

               indicates that erasing the surface of the printing cylinder usually take place after the printing process.             

               The relevance of these two paragraphs to                                                                               

               the claimed subject matter is not clear.  The last two paragraphs on page 3 refer to a method of                       


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