Appeal No. 95-3911
Application No. 08/189,124
noted by the Examiner, the absorbing dye of Yoo et
al. preferentially absorbs light of the illuminating
wavelength and not of the fluorescing wavelength.
Accordingly, the absorbing dye of Yoo et al. could
not be used and was not used in the present
invention since it does not preferentially absorb
light of the fluorescing wavelength. Therefore, as
can readily be seen, to arrive at the claimed
invention using Makino et al. or Modell and Yoo et
al., one must take several inferential leaps which
are neither taught nor suggested by the prior art,
not the least of which is that the disclosure in Yoo
et al. of a dye that absorbs illuminating light
renders obvious the use of a dye that absorbs
fluorescing light, especially where no need for a
dye that absorbs fluorescing light is apparent from
Makino et al. or Modell.
We agree with appellants’ arguments. To establish a
prima facie case of obviousness, the examiner has the initial
burden of demonstrating by evidence or a convincing line of
reasoning why the absorptive dye in Yoo would absorb a
fluorescent light in addition to the scattered or reflected
light (Answer, page 5). In the absence of such evidence in
the record or a convincing line of reasoning by the examiner,
the burden is not on the appellants to prove that the dye used
in Yoo will not absorb fluorescent light. Consequently, the
obviousness rejections are reversed.
DECISION
The decision of the examiner rejecting claims 1 through 4
7
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007