Ex parte Sanders et al.

Board of Patent Appeals and Interferences

Sep 10, 1998

08078533 (B.P.A.I. Sep. 10, 1998)

- 1 -
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DAVID J. SANDERS
FRANCOISE M. WINNIK and MARCEL P. BRETON
______________
Appeal No. 95-3537
Application 08/078,5331
_______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. ' 134 from the decision of the examiner refusing to
allow claims 1 through 20 as amended subsequent to the final rejection.2
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the rejection of appealed claims 1 through 20 under 35 U.S.C ' 103 over AMiyamoto et al.
or Fredrickson either taken in view of appellants= admissions (see for example page 22 of the
specification) and further in view of Ma@ (answer, pages 2 through 5).3 It is well settled that the

1 Application for patent filed June 16, 1993.
2 Amendment of August 19, 1994 (Paper No. 6).
3 The references relied on by the examiner are listed at page 2 of the answer. We refer to these
references in our opinion by the name associated therewith by the examiner.
Appeal No. 95-3537
Application 08/078,533
- 2 -
examiner must satisfy his or her burden of establishing a prima facie case of obviousness by
showing some objective teaching or suggestion in the applied prior art taken as a whole or that
knowledge generally available to one of ordinary skill in the art would have led that person to the
claimed invention as a whole, including each and every limitation of the claims, without recourse
to the teachings in appellants= disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-
1076, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1014-17, 154
USPQ 173, 176-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). We conclude that the
examiner has not carried her burden.
The examiner has premised the rejection on the theory that A[o]nce thermal ink jet printing
was known in the art, and the stringent requirements for the ink composition were known in the
art, it would have been obvious to one of ordinary skill in the art to determine what types of
compositions would be appropriate for thermal ink jet printing processes and which would not be@
(answer, page 6). However, while the claimed printing processes may involve basically simple
concepts per se when considered from hindsight, that fact alone is not sufficient to establish a
prima facie case of obviousness. In re Horn, 203 USPQ 969, 971 (CCPA 1979) (A[S]implicity
and hindsight are not proper criteria for resolving the issue of obviousness.@). Indeed, it is well
settled that whether the claimed invention as a whole complies with ' 103 is determined by
whether the combination of references applied in the rejection would have reasonably suggested
to one of ordinary skill in this art both the claimed processes and the reasonable expectation that
these processes can be successfully performed. Fine, supra; Dow Chem., supra.
We observe that the examiner has responded to appellants= argument that Aneither
[Miyamoto et al. nor Fredrickson] teach or suggest the use of the specific desensitizing
compositions recited in claims 11, 12, 13, 14, 18 and 19@ (principal brief, page 7)@ by stating that
A[t]he Examiner agrees that these references were not relied upon for specific teachings of the
desensitizing compositions recited by the instant claims@ (answer, pages 6-7). From our review of
these references, we must agree with appellants (principal brief, pages 7-8) that neither of these
references teaches or suggests a desensitizing composition comprising at least water, an organic
component and a desensitizing agent as required by the appealed claims. The examiner also
Appeal No. 95-3537
Application 08/078,533
- 3 -
acknowledges that AMa does not disclose printing a desensitizer composition@ (answer, page 7)
and has relied on the admissions in appellants= specification (page 22) only to show that the
desensitizer materials used in the desensitizer compositions of the claims were known in the art.
Accordingly, since the desensitizing compositions were not taught by the applied
combination of references, the burden is on the examiner to enter into the record evidence and/or
scientific reasoning explaining why one of ordinary skill in this art would have modified the
desensitizing compositions taught by Miyamoto et al. and Fredrickson in order to arrive at the
aqueous desensitizing compositions specified in the appealed claims in order to make out a prima
facie case of obviousness. In the absence of such evidence and/or scientific reasoning, it is
manifest that the only direction to appellants= claimed invention as a whole on the record before us
is supplied by appellants= own specification.
The examiner=s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Ronald Zibelli
Xerox Corporation
Xerox Square 20A
Rochester, NY 14644