Appeal No. 1997-2593
Application No. 08/160,290
novalaks); and compatible residual coating solvents such as (-
butyrolactone and diacetone alcohol. See the respective
disclosures of Liu at column 4, lines 3-12; column 4, lines
12-21; and column 5, lines 3-7. Significantly, as emphasized
by the examiner in his answer, Liu further exemplifies
photosensitive coating compositions comprised of solvent blend
mixtures including diacetone alcohol and (-butyrolactone in
weight ratio of 42:58. See the "Black" formulation described
at column 5, lines 25-42 of Liu.
Apparently, based on the disclosure of the "black color
formulation" described at column 5, lines 25-42 of Liu,
appealed claims 1, 7, 10, and 23 were rejected as
"anticipated" by Liu. See the answer at page 4. However,
Liu’s specific "black color formulation" utilizes a polyvinyl
acetal/alcohol/acetate resin, not a novolak resin, as required
by the appealed claims, and accordingly, appellants correctly
point out that Liu "fails to disclose any specific example of
an embodiment falling within the scope of the claims of the
present application" (brief, page 9). Moreover, even the
examiner acknowledges (answer, page 4) that "[a] clear-cut 35
U.S.C. § 102 rejection may not apply" because excessive
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