Ex parte DALTON et al. - Page 4

          Appeal No. 1996-3990                                       Page 4           
          Application No. 08/145,239                                                  

          extraction.  In our view, a reasonably supportable basis for                
          combining the teachings of the references has not come to                   
          light in the examiner's futile attempt to arrive at the                     
          claimed invention from the disparate teachings of the applied               
          references.  Moreover, even if the teachings of the admitted                
          prior art and Shanton were combinable, the examiner has not                 
          established that the claimed composition would result as                    
          evident from the discussion that follows.                                   
               Another theory advanced by the examiner in support of                  
          the rejection is that Shanton alone may furnish sufficient                  
          evidence to render the claimed composition "... substantially               
          met..." (answer, page 2) and hence obvious within the meaning               
          of 35 U.S.C.  103.  However, the examiner has not furnished a              
          convincing explanation as to why an ordinarily skilled artisan              
          would have been led to pick a color developer corresponding to              
          the claimed oxime and a solvent corresponding to the claimed                
          ester for use in forming the record material of Shanton so as               
          to somehow arrive at the claimed composition components from                
          among the many choices for the developer and solvent disclosed              
          by Shanton.                                                                 

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