Appeal No. 95-3988
Application 07/986,316
Indeed, we find that one of ordinary skill would have recognized that the use of both heat and pressure
would combine the advantages taught by Watanabe for transferring an image prepared with the solid
developer vehicle. Furthermore, with respect to appealed claim 90, we recognize that, as pointed out
by appellants (principal brief, pages 19-20 and 20-21), the passages from Watanabe cited by the
examiner do not specifically teach a transfer method wherein a transparency is the substrate. However,
as we set forth above, the examiner points out that Watanabe does disclose the use of transparency
substrates “for image retention.” We take notice that ordinary transparency film can be impregnated to
some extent and thus one of ordinary skill would have been motivated to use such film as the substrate
in the bonding transfer method taught in Watanabe (col. 10, lines 22-55) with the reasonable
expectation of obtaining a transferred image.
Accordingly, based on our consideration of the totality of the record before us, we have carefully
weighed all of the evidence of obviousness found in Watanabe and all of appellant's countervailing
evidence of and arguments for nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1 through 14, 17, 18, 20, 25 through 42, 44 through 48 and 87 through 90 would have
been obvious as a matter of law under 35 U.S.C. § 103. In re Eli Lilly & Co., 902 F.2d 943, 948, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990); In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263
(Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We do not reach the same conclusion with respect to appealed claims 79 through 83. We must
agree with appellants (principal brief, pages 13-15) that there is no evidence in the passages of Watanabe
cited by the examiner (answer, page 5; see also pages 10-11) of a developer “vehicle with a melting point
of at least about 25EC” that consists essentially of “a mixture of a liquid hydrocarbon and a metal soap
which is insoluble in the liquid hydrocarbon at a temperature of about 25EC or less” as specified in claim
79. Indeed, there is no developer that is liquid “at a temperature of about 25EC or less” disclosed in the
reference as Watanabe instructs that the “electrically insulating organic material 5 has a melting point of
not lower than 30EC” (col. 4, lines 56-57). It is well settled that in order to establish a prima facie case
of obviousness, “[b]oth the suggestion and the reasonable expectation of success must be found in the
prior art and not in applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
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