Appeal No. 1999-1005
Application No. 08/739,157
his or her determination that the allegedly inherent
characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1463-64 (Bd.
Pat. App. & Int. 1990).
In the appeal before us, for the reasons expressed above,
the examiner has failed to provide a basis to reasonably support
his determination that ablation mass-transfer necessarily flows
from the teachings of DeBoer. With specific reference to the
Section 102 rejection based on the examples (i.e., examples 3 and
4 in particular) of DeBoer, we further emphasize that the
examiner has failed to rebut with any reasonable specificity the
appellants’ argument that the presence of patentee’s spacer bead
overcoat would prevent an imagewise ablation mass-transfer of the
type under consideration. Moreover, the Section 103 rejections
based on DeBoer are also deficient in that the specific
combination of elements defined by the here claimed organization
would have been obtained from the broad disclosure of DeBoer only
by selectively picking and choosing particular materials and
ingredients with the aid of impermissible hindsight derived from
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