Appeal 2007-3797
Application 10/453,061
printing with thermal technology and papers suitable therefor, which, in
Appellants’ view, establishes at least inherent or implicit support for the
added claim language (Br. 7-9, Reply Br. 2-6). Appellants contend that the
added claim language does not change the scope of the invention claimed
because of an asserted laser printable stock or paper requirement (Br. 9-10,
Reply Br. 6-8).
Appellants’ arguments concerning express support do not
persuasively rebut the prima facie case of a lack of descriptive support for
the amended claim language furnished by the Examiner. This is because
Appellants have not established that the Specification, including the portions
of the Specification referred to by Appellants in the Brief, furnishes an
explicit description of a business form having no heat activated image
producing chemical coating on the paper establishing that the named
inventors had possession of a business form that included no heat activated
image producing chemical coating on the paper. However, such a business
form is required by the amended claims.
The Whitcomb Declaration (Br., Exhibit A) distinguishes direct
thermal paper from laser printable paper based on the laser printable paper
having no chemical coating of the type employed on a direct thermal paper
(Decl. ¶¶ 13-18). However, the amended claim language, “paper having no
heat activated image producing chemical coating thereon” as found in all the
independent appealed claims (claims 1, 22, 26, and 29) excludes image
producing chemical coatings that can be heat activated at any temperature,
including temperatures much higher than a paper subjected to direct thermal
printing or than a paper subjected to a typical laser print head fuser may
encounter. In this regard, we recognize that the Whitcomb Declaration
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Last modified: September 9, 2013