Appeal No. 1998-0189
Application 08/196,933
not simply a possible one” (emphasis in the original), citing In re Oelrich, 666 F.2d 578,
212 USPQ 323 (CCPA 1981). Brief, paragraph bridging pages 29 and 30.
9. In response to appellant’s arguments in finding 8, the examiner argues that
the prior art teaches “articles possessing all of appellant’s claimed structural limitations.”
Answer, page 6, lines 11-13. The examiner further argues that, unlike the facts in
Oelrich,
the instant case deals with a limitation which does naturally flow from a
prior art teaching. . . The four references here do not require interpretation
since they simply teach the existence of a known material on a generic
substrate. These are the only limitations in the claims on appeal. It
‘naturally flows’ that if applicant’s claimed additive functions as an ink
receiving material then the identical additive in the prior art also functions
in the same manner (i.e., as an ink jet receiving material) (emphasis in the
original).
Answer, paragraph bridging pages 6 and 7.
We agree with appellant’s position. The examiner does not explain why the prior
art materials would be suitable for receiving printed images or rapid drying images from
an aqueous ink. Contrary to the examiner’s position as set forth in finding 9, the prior
art does not simply teach the existence of a known compound on a generic substrate.
As seen in findings 2 through 4, the Tachibana and Takeda light sensitive silver halide
containing-layers and the Satomura recording layer are complex compositions that
comprise reactive components. The examiner ignores the complexity of the prior art
layers. The examiner fails to provide any factual basis stemming from the prior art or
8
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