Ex parte HATSUYUKI et al. - Page 5




          Appeal No. 1997-3416                                       Page 5           
          Application No. 08/339,340                                                  


          of Matsumoto that contains a phytic acid component and an                   
          aminobenzenesulfonic acid.  Matsumoto teaches that the                      
          treating solution is used after a development step, and prior               
          to a burning-in treatment of a photosensitive lithographic                  
          plate to prevent background stains (column 3, lines 37-68).                 
               Here, we note that the examiner does not specifically                  
          address or satisfactorily explain why one of ordinary skill in              
          the art would regard the teachings of surfactant alternatives               
          for the particular treating solution of Matsumoto to be                     
          applicable  to the disparate developer solution of BP '830                  
          from the combined references' teachings.                                    
               Perhaps more significantly, the examiner has not pointed               
          out any teaching of any of the references that suggest an                   
          anionic surface active agent that would be embraced by                      
          appellants' claim.  In this regard, we note that the alkyl                  
          diphenyl ether disulfonates generically referred to by                      
          Matsumoto do not particularly suggest a diphenyl ether                      
          compound having an ammonium sulfonate group and that is                     
          further limited by the formula of the appellants' claim 16.                 
          The examiner has not established where the references furnish               
          a suggestion or motivation for selecting an anionic surface                 







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