Appeal 2007-3374
Application 10/448,758
2. Has the Examiner identified a reason that would have prompted one
of ordinary skill in the art to employ a flatting agent in an inner ink layer
underneath of a photo-curable top coat having desired differential gloss
within the meaning of 35 U.S.C. § 103(a)?
PRINCIPLES OF LAW, FACTUAL FINDINGS, AND ANALYSES
ANTICIPATION
For a § 102(b) rejection to be proper, the Examiner must demonstrate
that the applied prior art clearly and unequivocally describes each and every
element of a claimed invention, without any need for picking, choosing, and
combining various disclosures therein. In re Arkley, 455 F.2d 586, 587-88,
172 USPQ 524, 526 (CCPA 1972). When the Examiner relies upon a
theory of inherency, “the [E]xaminer must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)
(emphasis omitted). It must be emphasized that inherency “may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” Ex
parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
Applying the above principles of law to the present situation, we
concur with the Appellants that the Examiner has not established a prima
facie case of anticipation within the meaning of 35 U.S.C. § 102(b). As
correctly pointed by the Appellants (Br. 10-17), Mawson does not teach,
much less clearly and unequivocally teach, employing silica (delustrant) in
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