Appeal No. 1996-1887
Application 08/295,315
further in view of Vanier et al. ‘144 (answer, pages 3-6).2
It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the expectation of success must be founded in the prior art, not in applicant’s
disclosure.” In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Thus, a prima facie case of obviousness is established by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or 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 Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78 (CCPA
1967).
We agree with appellants that the examiner has failed to carry his burden of making out a prima
facie case of obviousness with respect to the claimed invention. We have interpreted appealed claim 7
in light of appellants’ specification as it would be interpreted by one of ordinary skill in this art to
encompass a process of forming an ablation image comprising at least heating by means of a laser, a
dye-ablative recording element comprising at least a support, an image dye layer, and a polymeric
overcoat comprising at least a polyurethane, cellulose nitrate, cellulose acetate propionate, gelatin or a
polyacrylate containing polytetrafluoroethylene (PTFE) beads, but not a separate receiving element.
See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The sole
disclosure in the record adduced by the examiner that pertains to the laser heating of an element that
contains a support, a dye layer, and overcoat , but no receiving element, is the section of DeBoer ‘572
Example 3 involving a “variation to demonstrate positive imaging” formed by the laser heating of an
assembly that includes both a dye-donor element and a dye-receiver element, wherein the “evaluation
was done . . . [without a] dye-receiver” such that an “air stream was blown over the donor surface” to
remove dye “sublimed away by the laser” (col. 17, lines 40-67; emphasis supplied).
The overcoat used in the dye-donor element of this section of DeBoer ‘572 was formed
2 The references relied on by the examiner are listed at page 2 of the answer.
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