Appeal No. 1999-0267
Application 08/744,268
Appellants argue that Mizuno discloses glass as a
support, but not for a lithographic plate. Appellants
further argue that commercial glass can have different
values for the failure stress. Appellants point out that
their claimed invention requires a failure stress of more
than 4 x 107 Pa, whereas Mizuno provides no guidance in
this regard. (Brief, page 7).
Appellants further argue that when glass is thinner
than 1.2 mm, it is possible to supply the glass on a
roll, and thus the glass can be unwound and coated as a
web in a continuous coating machine. Appellants state
that this is particularly the case when the glass support
has a Youngs’ modulus equal to or lower than 10 x 1010 Pa.
(Brief, page 8). Appellants point out that nothing in
the reference to Mizuno would have led one skilled in the
art to their particularly claimed glass support in this
regard. (Brief, page 9).
The examiner argues that the failure stress value
and Youngs’ modulus value is inherent to the glass
support of Mizuno. (Answer, page 4). The examiner also
states that it would have been obvious to have used
appellants' particularly claimed glass support because
such a glass support "has been known and commercially
available". (Answer, page 6).
With regard to the examiner's comments concerning
inherency, we note that when an examiner relies upon a
theory of inherency, “the examiner must provide a basis
in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent
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