Appeal No. 95-3537
Application 08/078,533
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
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