Appeal No. 1999-1005
Application No. 08/739,157
page 5). As phrased on page 11 of the answer, “the examiner
. . . holds that at some laser power possibly above that used in
the examples of DeBoer . . . ablation will take place.”
The record before us contains no evidence in support of the
examiner’s position that DeBoer’s system would exhibit ablation
mass transfer if it were exposed to a sufficiently high laser
power. In this regard, we emphasize that the appealed claims
require “an effecting ablative-transfer effecting amount of at
least one non-black body, non-imaging sensitizer that absorbs
laser radiation at a rate sufficient to effect the imagewise
ablation mass transfer of said topcoat” (appealed independent
claim 87). For all we know, patentee’s cyanine ingredient (i.e.,
which corresponds to the here claimed “non-black body, non-
imaging sensitizer”) of his thermal transfer system is present in
an amount which is completely inadequate under any degree of
laser power “to effect the imagewise ablation mass transfer”
required by the appellants’ claims.
It is well settled that the initial burden of establishing a
basis to deny patentability rests upon the examiner and that the
examiner, if relying upon a theory of inherency, must provide a
basis in fact and/or technical reasoning to reasonably support
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