Appeal No. 1998-0189
Application 08/196,933
5. None of the references teach that their respective materials would be suitable
for receiving printed images or that their respective layers would be suitable for
receiving rapid drying images of an aqueous ink.
6. In the statements of the rejections, the examiner does not explain how the
prior art materials meet the properties of the recording sheet required by the claims.
See Paper No. 16, mailed Jul. 31, 1996, pages 2 through 3.
7. In response to appellant’s arguments that the prior art does not disclose that
their respective materials would be suitable to receiving printed image or rapid drying
images of an aqueous ink, the examiner asserts that “[t]he cited prior art teaches
appellant’s claimed coating on appellant’s claimed substrate. Consequently, if
appellant’s claimed article functions as a recording material, then the prior art articles
also must function as recording material.” Answer, page 5, line 18, through page 6,
line 1.
8. Appellant disagrees with the examiner’s position as set out in finding 7.
Appellant argues that “the examiner must provide factual and technical grounds
establishing that the inherent feature necessarily flows from the teachings of the prior
art” (emphasis in the original). Appellant further argues that “[t]hat the prior art may
possibly have the same features as the claimed invention will not substantiate a finding
of inherency; rather, inherency must flow as a necessary conclusion from the prior art,
7
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