Appeal No. 1997-3887
Application 08/449,204
of optional additives (col. 4, lines 47-57) and there is no Example or other listing of ingredients for an
electrostatic layer which comprises the ingredients of the claimed blend.
We find that Namiki discloses an extensive list of a large variety of polymers having a particular
softening point, including reference to such as described in the Plastics Performance Handbook, in
which one of ordinary skill in this art can identify polymers that satisfy the first three ingredients specified
for the “blend” in claim 6, and would find that ‘[i]t is also possible to add various plasticizers” for the
other “blend” ingredient (col. 3, line 67, to col. 4, line 44). It is clear, however, that one of ordinary skill
in this art would have to make judicious selections from among the extensive listing of polymers and
include the optional plasticizer, without the aid of a template taught in the reference (cf., e.g., col. 4, lines
16-22) in order to arrive at the combination of ingredients in the claimed “blend.”
Based on these teachings of Akiyama, assuming that a “crack resistant” film is disclosed, and of
Namiki, we are of the opinion that neither reference prima facie provides a description of the claimed
graphic article of claims 6 and 9 in the absence of judicious selection, and thus each of the references fail
to describe the claimed invention within the meaning of § 102(b). See In re Sivaramakrishnan, 673
F.2d 1383, 213 USPQ 441 (CCPA 1982) (“[T]he fact remains that one of ordinary skill informed by
the teachings of [the reference] would not have had to choose judiciously from a genus of possible
combinations of resin and salt to obtain the very subject matter to which appellant’s composition per se
claims are directed.”); In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972) (“[F]or
the instant rejection under 35 U.S.C. 102(e) to have been proper, the . . . reference must clearly and
unequivocally disclose the claimed compound or direct those skilled in the art to the compound without
any need for picking, choosing, and combining various disclosures not directly related to each other by
the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of
a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may arise from the similarity of the subject
matter which he claims to the prior art, but it has no place in the making of a 102, anticipation
rejection.”)
With respect to the grounds of rejection of claims 7, 8, 10 and 11 under 35 U.S.C § 103 based
on Akiyama (answer, pages 6-7 and 10-11), it is well settled that a prima facie case of obviousness is
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