Appeal No. 1996-0903
Application No. 07/692,211
merely capable after curing of being engraved to produce ink-
retaining cells. Being made of a plastic composition
comprising epoxy resin, Nakamura’s plastic coating or layer is
inherently capable of being engraved to produce cells in the
manner claimed, which is all that is required to meet this
limitation in the independent claims. See In re Hallman, 655
F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981), In re Ludtke,
441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971) and In re
Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973).
The only other argument supporting patentability of the
appealed independent claims is that Nakamura discloses a
photographic printing medium utilizing electrical charges, not
a rotogravure printing medium. Appealed claim 41, however,
does not call for a rotogravure printing medium. Instead,
this claim broadly calls for “a printing medium” without
limitation as to the type of printing medium. Therefore, the
provision of a rotogravure type printing medium may not be
relied on to support the patentability of claim 41 over the
applied reference, for it is well established patent law that
features not claimed may not be relied upon to support
patentability. See In re Self, 671 F.2d 1344, 1350-1351, 213
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