Appeal No. 1997-0006
Application 08/409,946
with the reasonable expectation of preparing photosensitive recording layers that “exhibit excellent
photosensitivity and long-term stability or [sic] without any fatigue” as taught in this reference, even if
the X-form is not a preferred crystal form (e.g., col. 2, lines 35-43 and 58-68, col. 3, lines 37-40, col.
4, line 32, to col. 5, line 3, and cols. 6-7). See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807,
10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989).
Accordingly, since a prima facie case of obviousness has been established over and Kobata,
we have again evaluated all of the evidence of obviousness and nonobviousness based on the record as
a whole, giving due consideration to the weight of appellants’ arguments. See generally, 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).
Appellants submit that there is “no impetus to select an X-form mixed crystal of the metal-free
X-morphological form of unsubstituted phthalocyanine with metal-free (ortho) cyano-substituted
phthalocyanine for any purpose” (principal brief, page 10; emphasis supplied). In support of their
position, appellants urge in their principal brief that the X-form mixed crystals specified in the appealed
claims are not among the preferred crystalline forms disclosed in Tamura and “there is no disclosure [in
this reference] with respect to the superior properties for electrophotographic use . . . of the X-form
mixed crystals of (ortho) cyano-substituted and non-substituted metal free phthalocyanine as disclosed
in the present application” (pages 7-9; emphasis supplied). Appellants also point to evidence in their
specification with respect to the claimed X-form mixed crystals and other crystalline forms, including
those of meta-substituted phthalocyanines, as well as “X-type non-metal unsubstituted phthalocyanine”
per se (id., pages 8-10). We find that we agree with the examiner’s response to appellants’ arguments
and evaluation of the cited evidence in the specification (answer, pages 8-10), to which we add the
following only for emphasis.
We are not persuaded by appellants’ argument that Tamura prefers and exemplifies other
crystalline forms than the X-form because we fail to find on this record that this teaching of the
reference would have deterred one of ordinary skill in this art from selecting the X-form in accordance
with the teachings of this reference, particularly since there is nothing in Tamura to suggest that
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007