Appeal No. 98-1014
Application 08/521,013
regeneration as described in a specific German patent document ; however, the examiner has not3
explained how this German reference might relate to the subject matter of the appealed claims, or to
what extent this specific patent document is being relied upon. In light of the broad scope of the
discussion found on pages 2 and 3 of the specification, and the generalities of that discussion, the lack
of clarity on the examiner’s part as to precisely what constitutes the “admitted prior art” makes it
difficult to evaluate the examiner’s rejection.
Second, the examiner’s reliance on Chew is misplaced. Chew specifically pertains to a process
for cleaning the surfaces of magnetic disks. Furthermore, Chew does not disclose any particular
significance for the disclosed impinging angle of 20E to 40E from the vertical relied upon by the
examiner. Notwithstanding these deficiencies in Chew, the examiner appears to be of the view that
Chew’s impinging angle teaching would be broadly applicable to a method for cleaning a printing form.
However, the applied prior art could just as easily be considered to teach that in the printing arts,4
water jets should be oriented at about 90E relative to the surface of the print cylinder to be cleaned.
The mere fact that the prior art could be modified in a particular way does not make that modification
obvious unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d
3The document in question is German application 41 23 959.8, which was made of record by
appellant in the Information Disclosure Statement filed May 23, 1994 (Paper No. 6), and which was
considered by the examiner on September 27, 1994. See the initialed PTO Form 1449 included as an
attachment to the Office Action mailed September 28, 1994 (Paper No. 14).
4Note water jet nozzles 58 of Roberts.
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